
Copyright^?- 



CQBliRIGHI DEPQSIC 



At 



COLUlilBIA UNIVERSITY liT THE CITY OF NEW YORK 
COURSE ON PATENT lAW 
COPYRIGHT 1922 

^y / 
Everett 11. Curtis 



SYHiOPSIS OP LECTURE I 



A. PROGRESS OF C IVILIZA.TION IJIARKED BY HTVENTION (Necessity 
the prevailing cause). 

1. prehistoric Inventions 



Exam'ples : Stone implements, fire, "bow and arrow, canoe. 

2. Early Inventions 

Examples : Wheeled vehicles, sailing "boats, Implements 
of oronze, iron and steel. 

3. I.'.odern Inventions : 

Examples : Steam engine, printing press, power Z.oom, 
fire arms, electrical devices, Automohile and air plane. 

4. Invent ion means exercise of creative faculty , not mere 

good workmanship . 

Examoles : Invention of the wheel, prohably very crude at 
first, hut put into "better form later by good workmanship- 

3. PATENT L^lW SYSTEMS 

Patent Law Systems are now adopted by practically all 
nations and are the result of the desire to reward inven- 
tors and to stimulate inventions. They have greatly 
increased the number of inventions in the last one hun- 
dred years. 

1. ENGLISH SYSTEM 

a. At Early Common Law 

(1) There were two classes of patent monopolies under 
the Tudor s. 

(a) Those conferred on inventors of new manufactures 
or introducers of new trades within the realm. 



2 



These were alv/ays held a logiti^aate exercise 
1 r G ya 1 p i- e r o ga t i ve . 

(■b)Th-08s conferred, on favorites of the cro•'v^Tl, and 
grfinting tlie exclusix'-e I'ight to deal in -well 
kno?/n articles of commerce, such as salt, iron, 
oil, etc. These were ohnoxious and produced 
great hardship, and finally v;ere prohihited 
Ly la-.v. 

(£) In reign of queen Elisabeth ttie grants of patents 
oth.or than for inventions "became oppressive, and 
v^ere "by her after protest hy Parliament in part 
abolished by roya.l proclarcation November 28, 1801. 

(5) In Oarcy v. Allen, 11 Coke 84, Noy 173 {lC-02), a 
patent" granted by Queen Elizabeth for exclusive 
right to mcake, import and sell playing cards was 
held to be illegal at common lav/. 

(4) S'tatute of I\5onopolies, 21 James I, pa,s3ed 1525 in 
reign of liing James I, abolished motst of the obnox- 
ious monopolies and expressly excepted pa.tents for 
nev/ laanufactures therefore grantedc Provision was 
also made for the excepting of future patents for 
periods of 14 years or less for new manufactures 
•.vithin the rea.lm. 

b= lOLEI^ EI^GLISH SYSTEii 

(1) Erom the Statute of Monopolies and decisions 
thereunder is derived the modern Englishi 
patent Law. 

(2) At first patents were granted without exami- 
nation and ownership was left to litigation. 
But this practice is 'now changed. 

(3) Under the "'■i^nglish Law working of the invention 
is required within the realm by the patentee. 
There is no such requirement in the United 
States. 

(4) Formerly where there were a number of claims 
in the patent, if one vv-ere held invalid, altho 
the others v;ere ' valid: the patent was unen- 
forceable. This lias been recently changed so 
that now relief will be granted for infringe- 
ment of one valid claim. 

TH_S PATEITTS & LESIGIIS ACT, 1919, Section 9 




COLLIIBIA UNIVERSITY 

IK THE CITY or IffiW YORK 
COURSE OH PATENT LAW 



COPYRIGHT 


1922 


BY 


'^ 


EVERETT N.^' 


CURTIS 

1! 



©CI.A658805 



AAJO 



1 






-^ 



1 



use TUBES OH PAIEET LA¥ 



1. Constitutional and Statutory Provisions and General Nature 
of Patent Grant. 

2. Subject Matter of patents. 

3. Invention. 

4. JToveltj/ and Utility. 

5. The U. S. Patent Office and Applications for patent. 

6. The Specification and Cla.ims . 

7. Exa-^rdnation and Rejection of Glairas "by Patent Office and 
Amendments, including Division. 

8. Abandonment, Reissue and Disclaimers. 

9. Interferences and Appeals, Bill in Equity to Obtain Patent. 

10. Title and Licenses. 

11. Infringement. 

12. Co'orts, Parties and Causes. 

13. Actions at Law and Damages. (including Qui Tam actions.) 

14. Actions in Equity and Injunctions. 
15- Accounting Proceedings. 



\ 



AIiaERICAN SYSTEM 

a. The American system cf patent law finds its origin 
in the common law of England. 

'b. The Eirst Patent in America was granted i&irch 6, 1646 
by the General Court of Kassachusetts for 14 years 
for the exclusive setting up, use and trade of a new 
invention for engines of mills to go by water. 

(RECORDS OE GENERAL COURT OE ..ASt'ACHUSETTS) 

£. Original practice in this country was to grant patents 
without examination of prior art following the English 
practice, hut this was changed in 1836 when the 
present practice of making such an examination was 
adopted. 

d. There is no requirement of working the invention under 
a United States patent as in foreign countries. 

_e. The Constitutional Provision . 

(1) Text of Provision : "The Congress shall have 
...-power to promote the progress of Science 
and Useful Arts, by securing for limited' times 
to Authors and Inventors the exclusive Right 
to their respective Writings and Discoveries." 

Article _!, Section 8. 

(2) As used in the Constitution and U. S. Statutes 
"Discovery" is synonomous witih "invention". 

In re Kemper , 1 Mac A. Pat. Cas. 1 
14 Eed. Cas. 286. 

f . Patent Statutes 

Patent Act of 1790. (l Stat, at L. 109) inaugu- 
rated patent System of U. S. This was closely 
followed by the Patent Act of 1793 which super- 
ceded it and which has been amended from time to 
time by numerous acts, the most important of whi'^h 
was the Act of 1836. By this Act the Patent Office 
was created and organized. The main provisiens of 
the law as it now exists are to be found in the 
Acts of 1870 and 1875, as amended. 

£. The principal provision of the law as it now exists 
is Section 4886, which is as follows: 

"Any person who has invented or discovered any new 



4 



and usef^'ol art, machine, nanufacture, or oorripo- 
sition 01 matter, or any nev/ and useful improve- 
ments thereof, not known or used by others in this 
co'ontry, before his invention or discovery thereof, 
and not patented or described in any printed pub- 
lication in this or any foreign country, before 
his invention or discovery thereof, or more than 
two years prior to his application, and not in 
public use or on sale in this country for more 
than two years prior to his application, unless the 
same is proved to have been abandoned, may, upon 
pa3mient of the fees required by law, and other due 
proceeding had, obtain a patent therefor," 



h. The Formal Requisites of a U. S. Patent are: 

(1) Issued in name of United States of America. 

(2) Under seal of patent Office. 

(3) Signed by Commissioner of Patents, or his printed 
name attested by an assistant Commissioner or a 
lav; examiner duly designated by him. 

(4) Short title indicating nature and design of 
invention. 

(5) Grant to Patentee for 17 years exclusive right 
to make, use and vend in United States. 

(6) Copy of specification and drawing should be 
annexed. 

United States Revised Statutes , Sec . 4833, 3384. 

J.. Nature of the Patent Grant 

(1) Purpose of patent statute was to encourage 
inventions and secure the benefit thereof to 
the public at the expiration of the patent 

Bauer v. 0' DonneH ,, 229 U. 3. 1 

(2) Patent Defined : 

"A patent is a grant of a right to exclude all 
others from ms.king, using or selling the in- 
vention covered by it." 

U. S. V. Standard Sanitary I'/Ifg . Co . , 191 

Fed. 172. 



"The franchise ^wiicn the pa^tent g-rants con- 
si3"3 3.1tc.gether in the right to exclude e^ery 
one frcK. r-ir-Ving. using and vending the thing 
patented without the permission of the 
patentee- Tli^io is all that he ohtains by 
the patent. " 

Bloomer v. ^cjniemn, 14 Ho??. 539, 549. 

(3) Three exclusive rights are conferred by a 
patent: 

(a]Right to exclude others from irg.jging . 

(h) Right to exclude others from sellin g. 

(c) Right to exclude others from using . 

Motion pict ure Co. v. Universal Film Co . 
243 U. 3. 502 

(4) A ps-tent does not confer an af f irmtive 
right to ffis.lce, use and sell. This ri^:ht 
existed prior to the passa.ge of the lav/, 
and was always the right of an inventor. 

Bauer v. O^orinell, 229 U. 3. 1, 10 

Continental Paper Bap: £o. v. Eastern 
paper Bag Co. , 210 tj7 S. 405, 425. 

( 5 ) ? r JLiary and Seco ndary Patents . 

Relative to the place which they occupy in 
the art, patents 3.re, 

(a) pr i'Tia.ry ( o_r pionee r Q patent , representing 
a rr^rired a.dvance in the art and being 

e s s en t ia 11 y ba. s io . Examp 1 e s : Tel epho n e , 
Telegraph, Vulcanizing Rubber, etc. 

A Primary invention is "one which per- 
forms a function never performed by 3,n 
earlier invention". 

Central Pour dry Co . v. Coughlin , 141 
Eed. 91. 

(b) S econdary patent , representing an im- 
provement upon an old invention. 

A Secondary invention is "one v/hich 
performs a function previously performed 
by ea.rl ier inventions, but performs that 



'i 



function in a sulostant ially different 
rnanner from any which preceded it." 

Central Eoundr;/ Co . v. C o urhl in , supra. 

(6) A p3.tent is a contra.ot hetvi/eon the inventor 
and the goArernment. The consideration given 
"by the inventor is full disclosure; the con- 
sideration on tlie part of the go'vernment is 
a monopoly in the invention for seventeen 
years. 

Pried, Krupp, /M:t ien Gesellschaf t v. I..'idvale 
Steel Co., 191 i'ed. 588. 

National Hollow E.B. Co_. v. In t er changeahl e 
E. B. Co_. , 106 Fed. 693. 

(7) presumptions arising from grant are those 
of novelty, utility and patenta"bil ity. 

Wilkins Shoe-Button Fastener Go . v. Wehh , 89 
Fed. 982,996. 

Lehnheuter v. Holthau s, 105 U.S. 94. 

Mesker v, Thuener, 42 Fed. 329. 

2- APPLICAITTS 

(1) The first importer, if not inventor, has no 
right as in England to apply for a patent. 

(2) Applicant may oe "any person" 'vho is an 
inventor. 

Revised Statutes . Sec. 488 6; Patent Office 
Rule 24. 

"Any person" includes any sane person, 
regardless of sex or nationality. The in- 
ventor, if living and not under disahility, 
must execute the application. 

(3) Legal representative of inventor may 3-ct in 
case of his death or incapacity. In case 

of inventor's death, tlie application v/ill he 
made by, and the patent will issue to, his 
executor or administrator. In case an inven- 
tor hecomas insane, the aioplication m.ay he 
m^de "by and the patent issued to his guar- 
dian, conservator or representative. 



"Revised Statutes, Sec. 4393. 



patent Office Rule, 



(4) Prior ioaowledge or uso of ixi^ention in foreign 
country, if not patented or described in any 
printed publication, -jill not "bar applicant 
from oot3.ining a patent. 

Revised Statutes 4923. 

paten t Office Rule 27. 

'7estins;hou3e Machine Co. v. General Electric 



GO. , 199 [H'ed. 9 07. 

(5) Jo int Inventors 

Joint inventors are those whose ninds neet 
to accomplish the creation of a single inven- 
tion. They are entitled to a joint patent, 
and iray file separate or Joint applications. 
Only one patent, ho"vrever, will issue. 

3x parte bellman & lellnan, 83 Off. Gaz. 2055 

patent Office Rule 23- 

(5) Prior foreign patent of applicant for saxne 

invention is no bar -onless application there- 
for is filed more than twelve months "before 
filing of his application in this country/' in 
the ordinary case, or more than four mo'nths 
prior in case of designs. 

Revise d St atutes , Sec. 4337 
'ice Rule 29. 



(7) Officers and enrployees of U. S. Patent Office 
are not allov;ed to acquire interests in U. S. 
patents during their terras of office. 

Revised Statutes , Sec. 430. 

Sut they nay obtain patents after their terms 
of office for inventions ms.de "oy them during 
such periods. 

poote V. Pro St, 9 Ped. Oas. 362. 



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V 



COLUMBIA UNIVERSITY IN TI-S CITY OF EE¥ YORK 
COURSE ON PATENT LAW 



COPYRIGHT 1922 
Everett N. Curtis 



SYHOPSIS OF LECTURE II 



1. PATENTABLE SUBJECT IMTTER 

There are five classes of inventions which are each the 
statutory subject matter of patents: 

a. An art or process. 

"b . A machine . 

c. A manufacture. 

d. Composition of matter. 

e . A design. 

The first four classes are specifically referred to and 
covered by U. 3. Revised Statutes Sec. 4886, and the 
last class, that of design, is specifically covered Toy 
U. 3. Revised Statutes Sec 4929. No design invention 
can be combined in a patent v/ith any of the other inven- 
tions, and none of the inventions of the first four 
classes can be combined in a patent except where they 
are dependent upon each other and mutually contribute 
to produce a single result. 

Patent Office Rule 41. 

2. ARH? OR PROCESS 

In Patent practice the words "Art", process" and "Method" 
are used interchangeably. 

a. Defined . "A process is a mode of treatment of certain 
materials to produce a given result. It is an act, or 
series of acts, performed upon the subject matter to be 
transformed and reduced to a different state or thing." 

Cochrane v. Deener . 94 U.S. 780, 788. 

b. "The general definition of process is. "an^operation 
performed by rule to produce a result""."' 

Walker on Patents . Sect 3. 




2 

"b . Examples : 

(1) Vulcanizing India RuVoer 

(2) leaking cf '.waterproof cloth 
( 5 ) Siiie 1 1 i ng of ores 

(4) .Art of Tanning 

( 5) Art of Dyeing 

'^ • ik Patentable i^ r o c e s s cannot c over the pr inciple 
or iTiole of o peration of a rachme i 

"It is well settled that a man cannot have a patent 
for the function or a,Ls tract e:^iect of a laacnine, 
hut onlT' for the irachine which produces it." 

Corninr t. Furden , 15 Ho:7, 252. 

Bur r V. Suryee , 1 Wall. 531, 5'^0. 

d. A Law of nature or a scientific principle i_s_ not 
patentable s_s_ an art. 

The lav; as to patentable axts and processes is re 11 
set forth in the following cases: 

(1) I'^ cClurg Y» Kings land , 1 How. 202, sustaining a 
patent for a process for casting steel rollers. 

(2) O'Reilly t. Morse , 15 Ho';v'. 112, holding a claim 
for the use of electric current for niexking 
intelligible characters at a distance to be void 
because for a principle. 

(3) Mo wry v. ^^ litney , 14 YJall. 620, sustaining a 
patent for a process for hardening and annealing 
cast iron car-v/heels. 

(4) Ti Ighs-ian v. proct_cr, 102 U-S- 7 07, sustaining a 
patent for a process of manufacturing fat acids 
and glycerine. 

(5) 2elephcne_ Cases, 126 U.3. 531, sustaining a patent 
for a proces^; of tranSiiiitt ing sounds telegraphically 

by causing electrica,! undulations, similar in 
form tc the YibrE^tions of the air accompanying 
said s cuncls . 

e. Patentabl e pr ocess . 

Sec on general subject •''/e stingbouse v- Boyden po^.Te r Brake 
Co., 170- U.S. 537, "and in re Vi/eston 94 Off. (&aa , 1786. 



There ard three classes of cases involving processes. 

(1) processes involving a chemical or other elemental 
action "which is new and useful, are patentable. 

E^ample_: 

The process of the Goodyear patent, which consists 
in vulcaniziijg India ruhher hy suhjecting it to a 
high degree of heat wiien mixed v/ith sulpher and 
a mineral salt . 

Goodyear v. Eerrv, 5 Fish. Pat, Gas. 439 

10 Ped. Gas. 631. 

(2) A process which amounts to no more than the mere 
function of a machine is not patentaole. 

Examnle ; 



Successive machine operations for making pulleys. 

Risdon Iron & Locomotive Works v . Me dart , 1 58 U . S . 68 . 

(3) A process or m.ethod not ahsolutoly dependent upon a 
machine, although perhaps "best, illustrated hy 
mechanism, may, if new and useful, be the proper 
subject of a patent. 

Examples : 



Folding paper in a peculiar way for the manufacture 
of paper bags . 

Eastern P aper "Bag Co . v . Standard paiQe r Bag Co . , 
30 Fed. 63. ~ ' ' 

IJew Method of weaving a hammock. 

Tr avers v. Ame r . Cordage Co. , 54 Fed. 771. 

3. Machine . 

a- • Defined .. 

"A machine is an instrum.ent composed of one or more of 
the m.echanical powers, and capable, when set in motion, 
of producing by its own operation certain nredeter- 
mined physical effects." 

Robinson on patents. Sec- 173. 



St earn v. Russell , 85 Fed. 218. 

"The term machine includes every mechanical device 
or combination of mechanical powers and devices to 
perform some function and produce a certain effect 
or result." 

Corning v. Burden , 15 Hov/. 252. 

"b. Result of m^achine is not patentable . 



"Patents for a miachine will not be sustained if the 
claim is for a result, the established rule being 
that the invention, if any, within the m-caning of 
the patent act, consists in the means or apparatus 
by which the result is obtained." 

Fuller V. Ventzer , 94 U.S. 288. 

c . Examp le s : 

(1) Sewing Mac hi -ne . 

Singer v- Eransdorf , 7 Blatchf . 521. 

(2) Seed planting machine. 
Brown v. Guil ds 23 Wall. 181. 

(3) Wire Fence machine. 

Denning Wire & Fence Co • v. Am. Steel & Wire Co . , 
ley Fed. 793, 

(4) Cash Register. 

ITat* 1 Cash-Register Co . v. Boston Cash Indicator 
Co., 156 U.S. 502. 

4 . Manufacture » 

a. A Manufacture includes everything made by the art and 
industry of man, except machines, compositions of 
matter, and designs. 

Johnson v. Johnson , 60 Fed, 618, 620 

Cincinnati Traction Co . v. Pope , 210 Fed. 443. 

In England the term "Manufacture" is given a much 
broader m.eaning than in the United States, and includes 
processes . 



- 'N 



t. An old unpatentable produci. nay "be x^roduced "by a ncrr 
patentable process. 

Txie ^/ ood -Paper Patent, 23 u-ali. 563. 
C. Examples : 

(1) Wooden pavenient . 

Stead Y. filliai^s, 2 Web. 126. 

(2) Collar button. 

Krene nt z v. Hottle Co., 148 U-S. 556. 

(3) Ear bed V/ire/ 

Washburn y. Seat _|Em All Barbed Wire Cc_. , 143 "J.S 
'27 5. 

( 4 ) R a i lv;ay Br ake -s hoe , 

Consolidated pralffi-shoe C o_ . v . 3ctroit Stot 1 Etc . 
Co., 59 P^dT 902. 

(5) Belt for driving nachiner-/'. 

Gandy v. !Iain Belting Co., 143 U.S. 587. 
,^. Co-nposition of Matter . 

a. Defined : 

"A patentable compound or composition of riatter is 
one which is produced by the admixtu.re of tvvo or more 
specific ingredients, and posesses properties per- 
taining to none of those ingredients separately, 
thereby accomplishing a new and useful result." 

Lane v. Levi , 21 app . D.G. 163 - 104 Off. C^az . 1898 

b . Examples : 

(1) Paint ReTiOver . 

Chadeloid Chemical Co . v. Franl<: S- 3£ Ronde Co . , 
14 5 Fed. 988. 

(2) Heat proof com.position for pipe coverings. 

Keasbey & T ^attison Co . v. Philip Carey Hfg. Co . , 
139 Fed. 571 



c. The relative proportions of the ingredients of the 
corpoi-.nd should he stated. 

^;7ncd -/. Under hi 11 , 5 Hoy/. 1. 

Tyler v. Boston , 7 V/all. 327. 

S. I'esig;ns . 

a . Iseiined . 

"Design, in vie-'v of the patent lavi?, is that charac- 
teristic of a physic:^l sulostance v/hich by means of 
lines, configuration and the like, taken as a lYhole 
makes an impression through the eye upon the mind 
of the oc server." 

re louse Scale & liifg . Co . v . American Cutlery _Go • , 
102 Fed. 916. 

"Patents for designs are intended to apply to 
matters of ornarrent, in v/hich the utility depends 
upon the pleasant effect ircparted to the eye, and 
not upon any nev/ function, ... Design patents refer 
to appearances, not utility. The ooject is to 
encovjrage Y.'crk3 cf art and decoration which appeal 
to the eye, to the esthetic emotions, to the 
"beautiful." 

Epwe v. 31od?ett ^ Claip-p Go . . 112 Fed. 51. 

b. Statutory provision . 

The statutory provision authorizing design patents 

in TJ. S. Revised Statutes, Sec. 4929, which is as follov/s 

"Any person who has invented any new, original, and 
ornar;:ental design for an article of manufacture, not 
kno"/n or used 03^ others in this country before his 
invention thereof, and not patented or described 
in 'anj- printed publication in this or any foreign 
country before his invention thereof, or more than 
two 3-&ars prior to his application, and not in 
public use or on sale in this country for niore than 
two years prior to his application, unless the same is 
proved to have been abandoned, may, upon payment of 
the fees required b^'- lav/ and other due proceedings had, 
the same as in cases of invention or discoveries 
covered by section forty eight hundred and eighty- 
six, obtain a patent therefor." 



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II 



c. Term. 



"p3-tents for designs may on grar.ted for the 
term of three yecj:s and 3i:c months, or for seYcn 
years, or for fourteen years, as the applicant 
may, in his application, elect." 

U. S. Pe vised Statute s, Sec. 4931. 

I Tote the difference from the term of an ordinary'' 
pg.tent, V7hich is seventeen ;;,-ears. 



d. Sxam.'oles : 

(1) Cos.ch lamp. 

Britton v. TThite Ffg. Co_. , 61 Fed. 93. 

(2) A K'j.g. 

Smith V. Stewart, 55 ]?ed. 481. 

(3) Handles of tatle-spoonc and forks. 

C- or ham Company v. White , 14 Wall- 511, 

(4) Dolls. 

C-e or ge Eorgfeldt L Co. v. Weiss , 265 ied. 268. 



COIimiSIA UiJIVERSITY IN TIE] CITY OP lEW YORK 
00US3S OxI PAZSIIT LA¥ 
COPYRIC-FT 1922 

Ererett IT. Jurtis 



S"KIO?SIS or IZSCTURS III 



a. Invention is a, recess ax y -prerequisite to paterta'bility . 
Under the Constitution and Section 4885 of the Rovisod 
Statutes the tiling sought to te patented must be an 
invention. 

Thomps on v. Bcisselier , 114 7.S.1, 11 • 

To entitle a person to a patent the sutiect matter 
thereof "inust "be the product of some excercise of the 
inventive faculties"/ 

pearce v. Mullford . 102 u.3. 112, 118. 

h. Definition . Invention involves the excorcise of the 
creative mind. The •'.vord invention cannot 
be defined authoritatively in any general definition 
recognized by the courts- The presence or absence 
of invention is to be determined by the process of 
exclusion through the application of rules mainly 
negative in character. 

Mcclain v. Ortiriayer , 141 U.S. 419, 426, 427. 

£• Invention is a cp.estion of fact, vrhich in an action 
at law is to be deterrraned by a iv.ry. 

Look V. Smith , 148 ?ed. 12. 

Keene v. ITov; Idea S'preader Co . , 231 ?ed. 701. 

d. PRIOR STATS OP TH5 ART. 

(l) Question of Invention must be investigated in 
the light of the state of the prior art. 

"The claims and specifications of every patent irnast 
be read and construed in the light of a kno'.7 ledge of 
the state of the art v/hen it was issued." 



ii; 



2 

p. H. ¥ur?hy lUf g . (2o_» v. Excelsior Gar Roof Co« , 

7 5 Fed. 96 5, 9V2. 

(2) Prior Art Defined .. The "prior art" or "state of 
the art" sirr.ply r.eans previous knowledge accessi- 
ble to the puhlic, and includes' all prior patents 
and printed publications in any language open to the 
public as \7ell as prior public uses. 

(3) All p atentees are Toresumed to be fully acquainted 
vith the prior s tate of the art ,. 

"In determining the question of invention, wd must 
presume the patentee was fully informed cf everything 
which preceded him, v^'hether such were the actual 
fact or not . " 

Mast ^ Foo s j'c Cc . v- Stover :!fg. C£. , V71 U-S. 485, 494. 
2. OEHERaL RUrSS RELATING TO IITVEITTIGF. 

a. oimplicity of means for attaining long sought for 
result does not indicate v/ant of invention <. 

in the leading case of The Barbed Y/ir 3 patent , 143 U.S« 
27 5, where it appeared x\-B,t the patentee was the first to 
discover the great advantages of a coiled wire to affix 
and form the barbs, the Suprrame court said (page 283), 
referring to one Michael Keller, a prior patentee: "It may 
be strange that considering the important results obtained 
by rCelly in his parent, it did no-c occur to him to sub- 
stitute a coiled v/ire in place of the diamond shape 
prong, but evidently it did not; and to the man to whom 
it did ought not to be denied the quality of inventor. 
There are many instances in the reported decisions of 
this court where a monopoly has been sustained in favor 
of the last of a series of inventors, all of whom were 
groping to obtain a certain result, which only the last 
one of the number seemed able to grasp." 

See also - 

Gandv v_. ivlain Pelting Co. , 143 U-S- 587, 594, where a 
patent for a belt 'for driving m.achinery was sustained. 

I<rementg v. Cottle Co . , 148 U-S- 556, 560, where it was 
held that it involved invention to make a collar button 
of one continuous sheet of metal. 



Ill 



b. EKercise of iuventiorx is not involved in the appli - 
c ation of r-.^er8 r.echanical or technical skill. 

"A device v/hich displays only the expected skill of 
the r-aker's calling, and involves only the excercise of 
ordinary faculties of reasoning upon materials supplied 
"by special knov^ledge , and facility of manipulation 
resulting from hahitual, intelligent practice, "is in 
no sense a creative v/ork of the inventive faculty, such 
as the Constitution and patent laws aim to encourage 
and reward." 

\7illiams Kfg . Co . v. Franklin , 41 Ped. 393. 39 5. 

Patton V. Clegg, 274 Fed. 118,' 120-121. 

"To grant to a single party a monopoly of very 
slight advance made , except where the excercise of inven- 
tion, somev/hat ahove ordinary mecha.nical or engineering 
skill, is distinctly shov;n, is unjust in principle a.nd 
injurious in its, consequences." 

Atlantic ^A^orks v. Brady , 107 U.S. 192. 200. 

Example : Only mechanical skill is involved in making a 

die for cutting dough on a flat surface into 
the form of a pretzel. 

Butler V. Steckel , 137 U.S. 21. 

Sam.e doctrine applied to chemical patents. 

Badische Aniline & Soda Fabrik v. Kalle , 94 Fed. 173. 

Also as to electrical patents. 

Pe rkins Electric Switch Mfg . Co - v . C-ibbs Electric Mf£- 
Co., b7 Fed. 925. 

c . Aggregation is not invention . 

A "combination to be patentable, must produce a 
different force or effect, or result in the combined 
forces of! processes, from that given by their 
separate parts. There m^ust be a new result produced 
by their union: if not so, it is only an aggregation 
of separate elements." 

Reokendcrfer V . Faber , 92 U-S- 2 347, 357 

In the above case the Supreme Court held that a patent 
covering the combination of a lead pencil and eraser at 
the end vi^as void as an aggregation. 



■'- ''\ 



Ill 



See also Ha i le s v. Van •'Yornier , 20 Wallace 3 53, ¥\rhere 

the letters patent in suit corered a self-feeding stove 
where many old fea.tv.res v/ere gathered together, "but 
did not perform any joint function. The court holding 
that, - "Merely bringing old devices into .j-axtaposition , 
and there allowing each to work out its o?/n effect with- 
out the production of something novel, is not invention." 

d. Double Use is not Invention. 



By "double use" is meant the using of an old process, 
machine, manufacture or composition of matter without 
substantial change for an analogous purpose. 

Sxam.ples : 

(1) Coffee mall applied for first time to grind oats 
or corn- 

(2) Cotton gin applied Y/ithout alteration to clean 
hemp . 

(3) Loom to weave cotton yarn used to weave woolen 
yarn. 

{4} Steam engine ordinarily used to turn a grist 
mill applied to turn the main wheel of a cotton 
factory. 

These four examples are cited ixij 

Bean v. Smallwood , 2 Story 408; 2 Fed. Cas . 1142 

(5) Device for raising window sash used for raising 
grain platform of harvester. 

peering v. M cCormick Harvesting Machine Co . ,40 Fed. 
236. 

(6) Apparatus for preserving fish in closed chamber 
held t.o be a double use of ice cream freezer, 

Br ovm v. Piper, 91 U.S. 37. 

B xcer)tio n 

Invention may be involved if device is for non- 
analogous purpose and is adapted for use in different 
br an ch of i ndus t ry • 

Potts V. Creager, 155 U.S. 597- 



Ill 



r 



e_. ^hanfc-e of form . 

"?,^erely to change the fern of a rriachine is the 
\7orlc of a constructor, not of an inventor; such 
a chsxifTe cannot te deemed an invention." 

Winans v. Den-r^iead , 15 How. 330, 341; 

Where, however, by reg.scn of such change, other 
riechanical principles are employed and a ne"." laode 
of operation crought ahout, invention is excercxsed. 
.Ihid". 

Charles Cocper v. The QtiS Compary , 166 ?ed. 361. 

Edison Electric Li ght Co . v . U . 5 . Electric 
Li;Thtinq Co., 52 Fed. 300- 

f . Suhe titution of Equivalents . 

( 1 ) Equivalent 5e f i ne d . 

An equivalent is "a thing which performs the 
same function, and performs that function in suTd- 
sta-ntially the same m.anner, as the thing of w-iich 
it is alleged to ce an equivalent." 

Walker on Patents , Sec. 354. 

(2) "The suhst itutior. of equivalents is not such 
invention as will sustain a patent." 

Smith V. Slichcls , 21 vVall. 112, 119. 

( 3 ) Ex ce pt 4o ns : 

"If such a substitution involves a nev/ mjCTde of 
construction, or develops new uses and properties 
of the article formed, it mia^^ am.ount to invention." 

Smith V. GcodyeaJ Dental Vulcanite Co ., 93 U.S. 486,496 

£. Duplication of Parts. 

A m.ere duplication of parts does not involve patent- 
able invention. 

Examples : 

(1) Putting pane of glass in fare box cf street car 
next the passengers in addition to the pane next tne 
d.river . 

Slav/son v. Grand Street R. R . Co. , 107 U.S. 653. 



ill 



(2) Duplication of Fire places in fvirnace chimney. 

ililler V. Voss , 4 Hughes 262. 

h. T'lerely cc inbining two pe.rts in one piec e . 

It is not invention to make in one piece v/hat 
V7as formerly made in tv/o , where no nev; result is 
obtained - 

General Elec . Go . v- Yost Elec . & T^f g . Co . 139 Fed. 
568. 

K. Mueller Ef ? . Co . , v. A. G. McDanzly & Morrison 
Mfg . Co. , 164 Fed. 991. 

i_. Omisoion of Parts . 

"A reconstruction of the machine so that a less 
number of parts will perform all the function . 
of the greater may be an invention of a high order, 
but the emission of a part, v/ith a corres/ponding 
om-ission in function, so that the retained parts 
do just wha.t they did before the comibin8.tion, can- 
not be ctherv/ise than a m^ere m^atter of judgment." 

McClain V. 0'rtm.ayer , 33 Fed. 284, 287. 
j_. Increase of We i ght . 

Mere increase of weight does not involve invention. 

Example : 

Increasing the weight of a hand wheel in a road 
ma.chine is not invention. 

Amer i c an Road Ma c hi ne Co . v . pennock etc . Go . , 164 
U.S. 26. 

k. Enlargement . 

It is not invention merely to enlarge a macnine, 

Examnles : 

(l) Circular S3.w-m.ill which was enlargement of 
machine for sawing laths . 

Phillips V. Page , 24 How. 164. 

[2] Planing-machine which was enlargement of small 
m.achine for cutting and planing light material. 

Planing Machine Co., v. Keith, 101 U-S. 479, 490. 



Ill 



(3) Hose -reel L::.ae of large diameter presumably- 
larger than pricr rieels. 

I'reston v. ?'an ard, 116 U.S. 663 

1. Eew P.e s v,lt . 

"It raay be laid down as a general rule, though 
perha,ps not an inva-riable cne , that if a nev^ 
combination and arrangement of knov/n elem.ents 
produce a new and beneficial result, never 
atts-ined before, it is evidence of invention. 
It was- certainly a new and useful result to make 
a' loom produce fifty yards a day when it never 
before had produced m.cre than forty, and we think 
that the combination of elements by which this 
was effected, even if those elements were sepa,- 
ratolj- known before, vva3 invention sufficient to 
form the i-.asis of a patent." 

. Loom Co. V. Higgins, 105 TJ.3. 580, 591-592. 

But it is not "invention to cor^bine old devices 
into a new article withoiit producing any new mode 
of operation". 

Burt V. Svory, 133 U.S. 349. 



COLOfEIA TJ^IIA,^R3ITY llT THS CITY O? 3W-!J YORK 
C CURSE 01^ PATEHT LaW 
GOPYHir-HT 1922 
Everett IK Curtis 



SYUOr^lS &F lECTURS IV 

1. iinVELTY. 

a- Statv.tor y l-r ovisioxi . Under Revised Laws, Sec. 
43B6, a patenta,Dle invention must oe "new", 
su''o,iect zc the qualifications therein stated. 

'b, Presun'ption of nevelty arises from grant of 
l3tte-rs patent. 

Micna-e l ^ ¥i Idman }^F_- Co_. v. Stafford , 10 5 Fed. 
58 0, 382. 

c_. ilovelty is a question of fact not ol' law. 

Turrill v. Railroad Conroany, 68 Wall. 491 

B i s c 1x0 f f V. We the red , 9 wall, 812. 

d. l-iovelty is negatived under Section 4886 by prior 
knowledge of persons other than the inventor 
manifested in three ways - 

(1) Through prior use. 

(2j Thi'ough prior printed puhlications other 
than patents . 

(3) Tnrough prior p;atents . 

2. PRIOR USE. 

a. Requisites of prior use . . 

(1) The use must .have been prior to invention 
of patent. 

(2) The use must have Leen of a complete, and 
operative tiling, 

(5) The use must have been a. prautica.1 one, 

(4) The use must have been in public. 



P.oToinson on patents , Sec. 517. 

t- Prior use in the United. 3tates by single person 
is_ sufficient to negative novelty . 

Coffin V. Ogden , 18 Wall,, 120., holding a patent for 
a door lock t o "be anticipated by a loclc made and put 
in use by one Erbe. 

c. prior use of sinplo article in the united States 



i_s_ sufficient to establish v^fant of novelty . ■ 

"Although only one clamp and one lamp v/ere ever 
nade , v/hich were used together two and one -half 
months only, and the invention was then taken from 
the lamp and v/as not afterward used with carbon 
pencils, it was an anticipation of the patented 
device . " 

Brush V. Condit , 132 U.S. S9 , 48. 

¥here it appears that the prior use was success- 
ful, subsequent abandonment will not be sufficient 
to prevent such use from being held to be an 
anticipation. Ibid 

Shopp V- Henr ici , 22 Ped. Cas . 26. 

d. The tise must not be in secret . 

The mere secret practice of a process or the con- 
cealed physical presence of a inanufacture in this 
country, is insufficient as an anticipation. 

Acm.e Flexible Clasp Co . v. Vary T^Ifg. Co ■ , 96 ped. 
544; 101 Ped. 269. 

But it is not a secret use where there was no more 
concea.lment than was inseparable from legitim.ate use 

Hall V. Tlacneale ,, 107 U.S. 90, 97. 

Brush V. Condit . 132 U-S. 39, 49. 

e_. An unsuccessful abandoned exper im.e nt is not an 
anticipation. 



Westinghouse Slectric & ivTf g. Co_. v. Beacon Lamp C o >_ , 
9 5 Ped. 462, 464. 

£- j"'-^^ 6 accidental use of s ome fea.tures of invention 
without recognition of their benefits will not 
nega.tive noveltv. 

Taylor Burnes Co. v. Diamond , 72 Ped. 182, 185. 



■■- 'A 



IV 



g. A loBt art dees not negative no^'--:-],ty. 

The rediscoverer of a lost art is entitled 
to a patent, notvithstariding evidence of the 
a.v/akened meLiory of a person v/ho formerly knew 
of the art and had forgotten it. 

Gavler v. Wilder , 10 Row. 477, 496-497. 

But this doctrine has no applicatrion to 
patentable suhject matter other than an art 
or process, of which knowledge is no longer 
ohtainahle , 

" Ike r on Patents , Sec, 71 

h. Practical Use . 

"Anticipatory matter which has never gone in- 
to practical use is to he narrowly construed." 

Si monds Roll inn; T^^ach. Co_«_v. H a thorn Mfg. Co • 
90' yed . 201, 203 . 

i' Possible ij-jodif iration of prior device . 

"It is not sufficient to constitute an antici- 
pation, that the de;gice relied on, might bgr 
modification, be made to accomplish the functions 
performed by tlie patent (in suit), if it were not • 
designed by its maker, nor adapted, nor actually 
used, for. the performance of such functions." 

To-)l:ff V. ToTQliff , 14 5 I[.G. 156, 161. 

3. PRIOR PRINTED PUBLICATION OTHER THAN PATENT 

^' RSQuisites , 

(1) publication prior to invention (bf patent. 

(2) For public distribution and accessible to 
public . 

(3) Specific disclosure of operative art or device 

b . Prin ted Publication Pe f i t ie d . 

"A printed publication is anything which is 
printed, and, without any injunction to secrecy > 
is distributed to any part of the public in any 
country." 

Walker on Patents , Sec. 56. 



lY 



£. Disclosure of pr i or Publication to ne_i^ative 
n ovelty rtiust te full" and coriplete . 

The information given Toy the prior publi- 
cation must be in such full, clear and exact 
terms as to enable any person skilled in the 
. art or science to which it relates to perform 
the process or make the thing disclosed. 

oeym.our v. Osborne , 11 Wall. 516, 555. 

Car negie Steel Co « v. Cambrig, iron Co_. , 89 Fed. 
721, 737. 

^' Publication in F oreign Country .^ 

A foreign publication is specif icalljr included 
in the statute (Sec. 4886) as a prior publication. 
But prior use and knowledge in a foreign country 
will not otherwise negative novelty. 

Revised Statutes , Sec. 4923. 

5.' P^a^ vin^is as_ prior Publications . 

A mere drawing will ordinarily not be a suffic- 
ient disclosure unless in connection with a full 
description. 

New process Fermentation Co. v. Koch, 21 Fed. 580 



Put a published draining or cut containing 
the design is sufficient in itself to constitute 
anticipation of a design patent. 

Britton v . "/hi te , 61. Fed. 93. 

PRIOR PAISITT. 

a. Requisites . 

(1) Must be published before date of invention 
it is clairced to anticipate, 

(2) Public docum.ent and accessible to public. 

(3) For the same art or thing, 

(4) Complete and specific disclosure of opera- 
tive art or device. 



IV 



t . " ?ape r •patent " or_ patent covering devi ce never 
in ccTiiTierGial use . 

A paper patent maj negative noveltj'- unless it 
be shown that the same is inoperative , or that 
the defects, if any there be, could not "be 
obviated by rschanic3,l skill. 

Edv/i n T "fil ler & Co_. v. Tie ri den 5r on ze Cc . , 7 9 off. 
Gas. 1520. ■ 

c, P^'ior Ab andoned Application £s not a_ pr i o r 
publication . 

The Corn planter patent - 23 Y/all. 181, 211. 

d_, gorei gn PatGnt_« 

A foreign patent doe? not become an antici- 
pation until it i^ actually published. Thus 
English patents are not published until the 
date of ensealing; French patents are not pub- 
lished until sealed and enrolled; German patents 
are iiot published until the date of "ausgegcben" . 

5, GSI^IERAL COJ'ISIDEPATIO.^TS. 

a. Publication ?r ior to Invention . 

A publication to constitute an anticipation 
iTti.-'.Ft be prior to actual date of invention, not 
•fiierely prior to dc.ce of filing of application. 

Von Sch-raidt v. Boweis , 80 Fed. 140. 

?lo\7 ¥or ]' s V. S tarli nn:, 140 tt.S. 198. 

b. To constitute an a,ntici"oatinn all of the elements 



2L. g'-''uiYa j.ents of the i nygnticn must be present . 
Ottuma Box Car Loader Co. v. Christj/- Sox Car Loader 



A combination *''can only be cinticipated by a 
prior d^;vice having identically the same elem.ents 
or the miBchanical equivalents of those that are iiot 
used. It vrill not do to find in older devicas a 
portion of these elements in one machine, another 
portion in a second machine, another in a third 
and so C'^j and then say that this device is 
anticipate J. , " 

Worewick l.^fa-. Co. v. Steiger, 17 Fed. 250, 2££. 



lV 



c_. " That ^>iich inf r inges , _if l ate r , would anticJT a ^^^^ 
if ear Her . " 

American ToIdc. cco Co. t. gtreat , S3 Fed. 700, 703. 

Mi lie r v . Eagle ^.'Tf cr . qq , ^ 151 U.S. 1-36, 203. 

This rule must be considered in connection 

with other rules of patent la vv , Taken literally 

it is uoo "broad and overlooks the distinction 

between primciry and secondary patents ■, 

¥a Ike r on Pa te nt s , Sec. 62. 

— ' A '-AiniA§£. device to anticiipate patented invention 
m ust perf cr-ui s ame "~ f 'u n c 1 1 o n ♦ ~ 

M orey v. Locky/ood , 8 Wall. 230, holding sol-t bulb 
syringe not anticipated by soft rubber cylinder 
v/ith metallic heads. 

M e the 3 on v. Campbe 11 , 77 Fed. 282. 

e_, Kovelty rray be present in a co mbination eve_n 
thou an . all its elemenTs are" eld. 

Hay V. S.F . Keath Cvcle Co . , 71 Fed. 411. 

cant re 11 v . Wallic k, 117 , U.S. 6S9 , 694 . 

f . Vfent of novelty must be proved be yond a reasonable 
d oubt . 

The Barbed Wire Paten t,, 143, U.S. 275, 284. 

Coffin V. 0£de_n, 18 Wall. 120, 124. 

g , Publication or Use more than two years p rior to 
application , 

An inventor is given by statute (Sec- 48S6) 
not exceedmfj two years to publicly discuss or 
to practice his invention, if he so desires, 
before he files his application for a patent. 
If he delays over two years he loses his right 
to a patents 

Eg:b3rt v^ Lippman , 104 U.S. 353. 

Swain v. Holycke Mach. Co» 111 Fed, 408, 



SUo vihere an experimental use is necessary 
for Llie purpose of testing the invention, a public 
use f :r such purposes may exceed the two years. 

City of Elizabeth v. ?aveyrent Co- , ^7 U-S- 126- 
h. The invent ion of .Desig n patents must be n ovel . 

Braldock Glass Co_^ Ltd. v. Macbeth, _64 Ped. 118 

UTILITY- (The invention must be useful) 

a- Utility Defined . 

"To possess utility a thing or a process must 
be capable of producing a result, and that result 
must be a good result. Both these meanings in here 
in the m-eaning of the v/ord." 

Walker on Patents , Sec 77. 

b. Utility is necessar-'- to Pat e nt ab i 1 1 1 ^'^ . (Revised 
Stats. Sec- 4886) Invention m.ust be disclosed 
in operative form. 

]?fa.nhattan Book Casing Machine Co • v. E. G. Fuller 
Co . ^74 Fed. 964. 

c_. Tuerc. utility does not establish patentability . 
It is not every slight improvement, hov;ever use- 
ful, that is the result of the inventive facuity- 

Shoe V. C- imbel . 96 Fed. 96, 99. 

d. Degree of Utility is net vital . 

"Itis very v/ell settled tiiat the courts will 
not be very rigid as to the degree of utility. 
... If the invention be usefull in anj"- degree, and 
not absolutely v;crthles3 , the patent v/ill be sustained." 

Vgince V. Campbell ,, 28 Fed. Cas , 9 55- 

e_. I noper at ive ne s 3 is f ata.l t o ut ility . 

Bliss V. Br_ooklyTi, 3 Fed. Cao . 7 06. 

Bur rail v. Jev/ett , 2 Paige 143. 

f . Utilit y is negatived by evil tendency of invention . 
An invention has no utility if it is injuroous to 
the morals, the health or the good order of society. 

Bedford v. Hunt, 3 Fed. Cas. 37. 



I" - 8 

But if invention accomplishes a coed result, it 

is iiTjiiater ial that it iiiay be used for a bad result. 

?ij.ller V. Berfrer , 120 Fed. 274. 

Citing 7allreT on patents, Sec 82. 

b.- Pa"^£-"^"'>^ is void for want of utility where excercise 
of invention is i njurious or destructive £f t£e 
ar t i c le g to be_ tre_ated. 

Klein v. Pus sell , 19 Wall, 433, 467. 

h' Utilit^-'- of an article of mn.nu.f acture may reside 
in its beauty of decoration . 

Magic Ruffle Co . v. Douglas , 16 led. Cas . 394. 

— '* L^"'^il3.tY rn3..jt be gaged by the state of the art at 
the tine tne patent was applied for . 

W est inghouse Electric & yifg . Co • v , Be s. con Lamp 
Co . 9 5 Ped. 462, 464. 

i' ' J'i^lJ-itv in m ost cases is a question of fact . 
It usually'' depends upon the' evidence resulting 
froKi actual experime.nt. 

I!itcholl V . TilslTrnan. 86 U.S. 287 . 

k. The patent itself is prirr.a facie evidence of 
utility . 

Vance V. Caivirbell , 28 Fed. Cas. 956. 

i* ^?^f set of Infringer u s i ng •pa.tented device . 

"that vfhi oh is used is useful. A thing to be 
useless can have no utility v;hatever- A patent 
is never declared inva.lid upon this ground, at 
the instance of one 77-ho is deriving benefit by 
i nf r i n g i n g up c n itt ^ c la ims • 

La Hue v. Western Electric Co-, 31 Fed. 80, 82. 

r. General use of invent ion is evide nee of Utility . 

Goodvorr lignt al Vulcanite Co. v. Smith , 10 Fed. Cas. 743 

n . "^'0 3 ign Ii.ventions . 

The v/ord ''useful" is no longer used in the statute 
rela.ting to design patents, so that utility has 
ae.^eJi to be an element of design patents. 



COLmffilA UKI'VERSITY IN THE CITY OF IIEW YCRK 
COURSE OK PATENT LAW 
COPYRIGHT 1922 
Everett N. Curtis 



SYl^IOPSIS OF LECTURE V. 

1. THE UNITED STATES PATENT OFFICE. 

— * History . 

Under Patent Act of 1790 (1 Stat. L. 109), a petition 
for a patent could "be made to the Secretary of State, 
Secretary of War., and the Attorney General, and would 
issue, if any two of them approved, for a term not 
exceeding fourteen years. Under patent Act of 1793 
(1 Stat, L. 318) the petition was to "be directed to 
Secretary of State alone. Comparatively few patents 
issued under these acts. In 1836, an act was passed 
establishing a patent office under a Commissioner of 
Patents, and inaugurating the present system of exami- 
nation, and many other features as they exist today. 
The Acts of 1870 and 187 5 were revisions based upon 
this Act and are the foundation of the present exist- 
ing law. 

b. Patent Office is within Department of the interior . 

U.S. Rev , stats . Sec. 475. 

£. Officers and Employees of patent Office . 

The present force of the patent Office comprises 
the Commissioner of Patents, two Assistant Commiss- 
ioners, five Examiners in Chief, An Examiner of 
Interferences, forty-seven principal Examiners, and 
numerous other officers, clerks and employees about 
525 in number. 

—' N^^ber of Patents issued . 

All of th4 patents from the patent issued July 
28, 1835, which is numbered One, have been numbered 
consecutively to date. The first patent issued in 
1922 -/as numbered 1,401,948, and the whole number 
of patents issued in 1921 was 41,401, 



]jutj.es of Ccrnmissioner of ratents 



"The Ccr:aii38ioner of patents, under -che direction 
of the Secretvu'y of the interior, shall superintend 
or perform all duties respecting the grs.nting and 
issuing of patents directed, oy law; and he shall 
have charge of all books, records, papers, models, 
machines, and other things helonging to the ps.tent 
Office." 



U.S. Hevised otat^ 



5eG. 481. 



But note Secietary of interior has no supervisory 
power over Cojianissioner ' s action in awarding or re- 
fusing a patent to an applicant, ouch action "being 
quas i - j ud i c i a 1 . 

Butterworth v. Moe , 112 U.S. 50. 

Duties of ExaiiU ne rs - i n - Chi e f . 

"The examiners-in-chief shall he persons of compe- 
tent legal knov/ledge and scientific abilitjr, whose 
duty it shall he, on the vnritten petition of the 
appellant , to revise and determine upon the validity 
of the adverse decisions of exaiiiiners upon the appli- 
cations for pa.tents , and for reissue of patents, and 
in interference cases." 



U. 



Revised Stats . 432 



Put i es of Examiner of i n te r f c re nc e s . 

It is the dvty of the Examnner of Interferences 
to take j uri&.diction of all interferences after the 
institution and declaration thereof. 

Patent office Rale 101. 



h. D uty o_f pr imar v or principal Examiner . 

The Primary Examiner is a quasi -judicial officer 
under the Comriiissioner . It is his duty to examine 
all applications m the first instance and to pass 
upon all defecto of form, and suhstance. 

L' Corres pond en re with Patent Office . 

All "business v/ith the patent Office shculd 

be transacted in Yoriting, and all office letters m.ust 

he directed to the Conxi'iiss ioner of patents. 

Patent Office Rules , 1 and 2. 



APPLICATICU PCH PAIEIJT. 

a. Formal Requisites . 

(1) First fee of Twenty Dollaxs . (Act of , 
February 18, 1922) 

(2) petition 

(3) Specification. 

(4) Oath 

( 5 ) Dr av;i ng s ( Tvlie n r e quir e d ) 

Patent Office Rule 30 . 

Formal papers must "fee in English Language 
and legiToly \vritten or printed in permanent ink. 
All parts must be received before application is 
placed on file. Applications unsigned or changed 
softer being signed will be stricken from the files. 

Patent Office Rules 30 and 31. 

b . Language of Statute . 

"Before any inventor or discoverer shall receive' 
a patent for his invention or discovery, he shall 
Eaake application therefor, in writing, to the Com- 
missioner of Patents, and shall file in the patent 
Office a witten description of the same, and of the 
manner and process of making, constructing, compound- 
ing, and using it, in such full, clear, concise, and 
exact terms as to enable any person skilled in the 
art or science to which it appertains, or v;ith which 
it is most nearly connected, to make, construct, com- 
pound, and use the same; and in case of a, machine, he 
sha.ll explain the principle thereof, and the best mode 
in which he has contemplated applying that principle, 
so as to distingu.ish it from other inventions; and he 
shall particularly point out and distinctly claim the 
part, impr ovem.ent, or combination which he claim.s as 
his invention or discovery. The specification and 
claim shall be signed by the inventor. " 

U . 3 . Revised Lav/s , Sec. 4888. 

£• iz^-k sgsential requisites must be complied with or 
patent i 3 sued on application will be declared void . 

^sr^letcn Mf g . Go . v. ',7est &c • Mfg- C£- 111 U.S. 490 

d . Serial Iraiabe r 



The serial number given to any application is the 
number given it in regular order of filing, the 
present series having been cojcamenced Jan. 1, 1915. 

Patent Office rule SI. 
e_. pending applications are kept secret . 

Six parte Neale , 15 Off. Gaz . 511. 

f_. Examination on Piling . 

On the filing of the application the Comtiissioner 
of Patents is required to cause an examination of 
the alleged new invention to be made. 

U.S. Revised Laws , Sec. 4893 

Eut the Patent Office is not required in advance 
of filing to respond to inquiries as to the novelty 

of an invention. 

Patent Office Rule 14 . 

£. Joinder of Inventions 

"T/.'o or more independent inventions can not be 
claimed in one application; but where several distinct 
inventions are dependent upon each other and mutually 
contribute to produce a single result they may be 
claimed in one application." 

Patent Off i ce Rule 41. 

h. Incomplete Application . 

The application must becompleted and prepared 
far examination withon one year or it becomes 
abandoned . 

Patent Office Rule 31. 

It is desirable tliat all parts of the application 
be filed at one tim^e, otherwise a letter m.ust accom- 
pany each part, accurately and clearly connecting it 
with other parts of the application. 

Patent 0ffic3 P.ule 32. 



V 



_i . Office Fees . 

(1) Cn filing application (First fee) ,p20.00 

(2) On final allovrance (final fee) 20.00 
(3) In Design Cases: 

For 3 years and 6 months 10.00 

For 7 years 15.00 

For 14 years 30 .00 

ii' Ordinary Course of Application Through the 
Fat e nt Office . 

(1) Receipt of Application at Patent Office, and 
transference to proper division for examination. 

(2) Action Toy Examiner , including rejection or 
allowance . 

(3) Response Toy applicant, including arguments and 
amendments . 

(4) Further actions by Examiner and responees by 
applicant . 

(5) Final rejection. 

(6) Appeal from primary Examiner on final rejection. 

(a) On matters of substanc e , to Board of 
Examiners in Chief. 

(b) On masters of form , direct to Comm^issicner 
of Patents . 

(7) Appeal from Examiners in Chief to Comjmissioher 
of patents • 

(3) Interferences . 

(a) Proceedings before Examiner of Interferences 

(b) Appeal to Board of Examiners in chief 

(c) Appeal to Coiriinissioner of Patents. 
(9) Final allowance and Issue of Patent. 



Y 



3. TIE PETITION 
a. Requisites . 

(1) Addressed to Com-lssioner of Patents. 

[2} otatenient of name, residence and post Office 
address of petitioner. 

(3) Request that patent \>e granted to petitioner. 

(4} Designation of title of invention. 

(5) Reference to specification for full disclosure - 

(6) Signature of inventor if alive and mentally 
competent, othfcr^7l^;e ^oy his legal representative. 

Patent Office Ru le . 33 . 

t . Po^.i^rer of A ttorney . 

A power of attorney appointing a registered 
patent attorney "che attorney of the applicant is 
ordinarily incorporated in the petition. 

Patent Office Rules , Form 4 page. 66. 

4. TIE 3EECIPICATI01T. 
a. Oo.i ects . 

(1) To make a full and clear disclosure, so that 

at the end of the term of the patent, the im^&ntion 
"becomes availahle to t I'B public. 

(2) To set forth the precise scope of the patent and 
the exact field from which all others than the 
patentee are to le excluded during the te.ra. of 
the patent. 

(3) Rohmson on P atents, Sects. 481, 483- 
Tucker v . Tucker Mfff • Co • , 24 Fed. Cas . 279. 

h. Arrangemerit of Spec ific ation. 

"The f olio v/ing- order of arrangement should he 
observed m framing the specification. 

(a) preariule stating the name and reside ixe of the 
spplicant and the title of the invention. 

(b) General staten^ent of the object and nature of 
the invention. 



(c) Brief description of the several views of the 
drawings (if the invention admit of such il- 
lustration) . 

(d) Detailed description. 

(e) Claim or claims. 

(f) Signature of Applicant." 
Patent Office Rule 39 . 

£. The description of the specification is addressed 

to those persons who are skilled in the art or 
science to which it appertains . 

U.S. Revised Statutes 4888 

O'Rei lly v. Morse , 15 How. 62 

Ilo further experiment should "be required ade- 
quately to determ.ine the manufacture or use of the 
invention. 

Tvler V. Boston . 7 Wall. 327, 330 

d. Detailed Description of Preferred form of Conatructicn. 

The specification should set forth a full and 
complete description of the preferred form of the 
invention, and explain the principle or mode of oper- 
ation thereof, in such -ma-nner as to distinguish it 
from, other inventions. 

Patent Office Rule 35. 

e_. Correctness of Description . 

While the description should he correct, abso- 
lute precision as to details is not required, and 
mere technical or immaterial defects should be 
disregarded . 

Dorse V Harvester Revolving Rake Go . v. Marsh , 
' Fed. CE.3 . J^r , 944. 

■A.dam3 V. Joliet Ii/If g . Co • 1 Fed. Cas . 123. 

Bxamples : 

Vi^ong nomenclature, erroneous theoiies, mis- 
statemc-ntj as to result of invention. 



^^\ 



V - 8 

£• Ii^£® I ^'T-V '" c ''r erne nt I nv e nt i o ns 

In case of mere improvements, the specification 
niAst clearly distinguish between what is old and 
v;hat is claimed to "be ne-;?, 

Pat^.ijt Off ice T^ule 36. 

M' Zl':£ opfccif ication mus t 'be con st rued as a whole with 
O'oher parts _of the a n p lie at ion. 

Howe V. l^ute, 13 Ped. Cas. 725. 

h. Ambiguit y in a specification is fatal thereto where 
_the t rue mer. ning c annot be ascertained vjithout _re- 
sorting to "" conj e'cture . 

Blake v. Stafford . 3 Fed, Cas. 610. 

i • A ZilXHiill false suggestion in a material fact in 
^ spscif icaticn "is fatal theret o. 

Delano v. 3c ot t , 7 Fed. Cas. 37S, 382. 

1 ' ,Cl5i'?is 

The specification must conclude with a specific 
and distinct claim or claims of the part, improvement 
or combination which the applicant regards as his 
discoA^ery . 

U . S = devised S tatut es, Sec. 4888. 

Fate-'To Office Rule 37. 

The claims are the measure of the patent. 

Ex parte Holt, 29 Off. Gas, 171 

is • 3iyj^atur_e, 

The specification must be signed by the inventor, 
if alive and mentally compete.nt, othenvise by his 
legal representative. Full names must be given, and 
all names legibly virritten. 

Pat ent O ffice Rule 40. 

5. OATH ■ 

a, A prerequisite _to the granting of a patent , but not 
~eij,-sen Z ig.i "fo " T ts validit y, 

^'•hitte^.cr^ v. Cutter, 29 Fed. Cas. 1120. 1121. 



'-■A 



V 



b. Requisites . 

(l) Must "be made as to inventor's belief on oath 
or aff ir-mation. 

[2] Must state inventor "believes himself original 

and fii'st inventor. 

(3) Must, state inventor does not know and does 

not believe subject matter was ever used before 
his invention. 

(4) Must state of what country the inventor is a 
citizen and viihere he resides. 

(5) Must state if sole or joint inventor. 

(6) Must state invention has not been in public use 
or on sale in U. S. for more than two years 
prior to his application- 

(V) Must state invention not patented or described 
in any printed publication in any country be- 
fore his invention, or more than two years prior 
to his application, 

(8) Must state invention not patented in any foreign 
country on an application filed by himself or 
his legal representatives or assigns more than 
twelve months prior to his application in this 
country. 

(9) Must state if any application filed abroad by 
Applica.nt or his legal representatives or as- 
signs prior to his application here, stating the 
country and date of application, and shall state 
that no application has been filed in other 
countries . 

(lu) If no application has been filed in any foreign 
country applicant must so state. 

(11) Oath must be subscribed by the affiant. 

Patent Office Rule 45. 

c . Must be mad e before an officer authorized to admin - 
ister o aths . 

Patent Office Rule 47. 



r' 



10 



•d. V/here oath is -made by an executor, administrator, 
guardian or legal representative cf inventor, the 
relationship of t-he axTiant to the inventor shall 
be alleged. 

Patent Office Rule 45. 

— ' ^^^-^ftional Oath. 

Additional oath iT.ay be required where applica-' 
, tions are not filed within reasonable time after 
execution of original nath. 

Pate nt Office Rule 46. 
-* Supplemental Oath for ratter not originally claimed . 

When an applicant present:? a claim for mattei" 
originally shovm and described but not originally 
claim-ed, he is required to file a supplemental octth. 

Patent Office Rule 48 . 

George Cutter Co . v . Metronolita n E lectric l''f g . 
Co., 2'^o led. 158 

DRAWINGS 

a. Required when nature of case admits. 

Patent Office Rule 50 , 

b . Signature . 

May be signed by inventor, his legal represen- 
tatives or his attorney; usually the latter. 

patent O ffice Rule 50 . 

£. Uniform Standard of Requirements . 

These requirements are very technical in 

character and can best be understood and followed 

b^/ a competant draftsman. They are fully set forth 
in Patent Office Ru le 52. 

F.GDELS AFD S?ECIL!S1TS 

S model vrill not be admitted except v-hen the 
prim.ary examiiier finds it to be necessary or use?rul. 
Specimens of a composition of matter shall be supplied 
only wiie n required by the Comrriissioner . 

Patent Office Rules 56 and 62. 



V 11 

8. EE3IG1T PATENTS. 

"rn3 following order of arrangement should bo 
otoerved in framing design sp-acif ica.tions : 

(a) preamble, stating name and residence of the 
applicant, title of the design, and the name 
of the article for vmich the design has been 
invented- 

(b) Description of the fj.;.7;ure or figures of the 
drawing . 

(c) Claim. 

(d) Signature of applicant." 
Patent Office Rule 82. 



COLUMBIA UlIVERSITY IS TO: CITY CF ]>LE]W YCRK 

COURSE CI: PATEiJT LAW 

COPltRlaHT 1922 

Everett 17. Curtis 



oYlJOPoIS 0? lECTirF^E VI 

A. CLAIMS AlID TH3IR R3L;xTI0>T TO TIIE PA.IEl^T. 

1. IvTccessit 3^ for Claig- . 

The applicant is roquired "by lav/ to "pra'ticu- 
IbxIj point out and distinctly claim the peo^t, 
iniprovonent , or cciribination which he clairjis as 
his invention or discovery". 

U. 3. Rev . Stats. Sec. 4888. 

"Nothing described in letters rs.tent is secured 
to the patentee unless there he in the letters a 
valid claim covering it". 

Maddcck V. Coxon , 4 5 Fed. 578, 579. 

2 - Claim in ec-rly days of patent system . 

In the earlier federal statutes no mention is 
made of the necessity for a claim, and the nature 
and scope of the invention had to be determined 



ho precise form of \yord3 is I'oq.uired in setting 
forth the claim . 

Wyeth V. Stone, 30 Fed. Cas . 7 25. 



4. The scope of letter a pa.tent is "bounded "oy the 
claim . 

Eurns v. ¥o v^r , 100 U.S. 671. 

5 . "The claim is the l if e of the :nat cnt " . 

R oh ins on on patents , Sec. 50 5. 



G . Bach cl'.iirr. mp.y "'oe regarded in the lig-it of o, 
se-'?c?.rate -patent . 

Celluloid Mfg. Co. t. Zylo n ito '2Tv.2h &_ CorJp 
Co .', 27 Fed. 291, 234. 

7 . All j:r.atter3 not included v/ithin the cl^.in!3 Pl Q 
''py implication dedicated to the puhlic . 

Jcv/ell Filter Co • v. Jiclcson , 140 Fed. 340. 

8 . Clainis are to "be construed in t he light of the 
str-.te of the ar t a.s ix e xiste d at the time o f 
the invention. 

ErQ--?n V. FiT)er , 91 tj. s. 57, 41. 

A Claim which reads upon the prior art is too 
Tproad, and is invalid . 

'^ * "A patent may "bo valid as to a single claiu and 
not valid at? to others " . 

Russell V. Place , 9-; U.S. 6 06, 609. 

10. A claim is not lilce a nose cf '.Ya:-: . 

"Some persons seem to suppose that a claim in 
a patent is like a nose of wax A7hic'h may "be turned 
and twisted in any direction, by merely referring 
to the specif icp.ticn, so as to make it include 
more than, or something different from, wha-t its 
v/ords express. The context miay, undou"bt3dly , "be 
resorted to, and often is, for the par pose of 
"better understanding the meaning of the cls-imi; 
but not for the purpose of changing it, and making 
it different from viiat it is." 

White_ V. Sunoar , 119 Tj. 8. 47, 51-52. 

11 . The "broader the claiia, the fewer the elements 
it will be found to contain . 

Every invention contains certain essential 
elements which enter into all forms thereof and 
em"body the essence of the subject matter. A 
"broad claim is the invention reduced to its low- 
est, and therefore fewest, termG. 

. GEIEF.AL RULES AS TO CLAIMS. 

1 . The claims of a patent are to " be fairly construed 
to cover the invention if •possi'ole . 

"The claimJB of a patent are tc "be fairly construed 



f3c ay to cover, if possible, tke invention, and 
thus save it, especially if it "be a meritorious 
one. In approaching a pa.tent, we are to look 
priinariij'- at the thing v/hich the inventor con- 
ceived, c::,nd d.esci'i'bed, in his patent, and the 
clai-na az'e to be interpreted with this particu- 
Itx thing ever before our eyes." 

Hos3l7 i:rg_ V. l^utter , 135 Fed. 9 5. 

rcClain v. Grtviayer , 141 U.S. 419. 

in re K-'.rbeck . 191 Off. Gas. 536. 

2. ClaiiLs are zc be construed in the light of 



"It is ... well settled that the claims of a 
patent ?.re to be construed by reference to the 
specifications (of which the drawings form a 
par-t), and that h3uch reference may be had, not 
for the purpose of expa,nding tte claim, but for 
the purpose of defining it and limiting it to the 
description of the invention". 

L"mb IPnit Go o ds Co . v. Lamb Glov e & bitten Co_. , 
120 Fed. £67 . 

F cehne r v . r-vorite Stoire & Range Co . , 84 Fe d . 

1 P ■" " P c; — — — — ^^— _— -__ _ -___^_ " 

I,lcs3burg V . rutter , 13 5 Fe d . 95, 99. 

But there is no principle of law which authorizes 
a court to read into the claim an element which 
is not present for the purposeof ireking out a case 
of novelty or infringemient . 

McCe^J-thy V. Lehigh Valley R .R . Co > 150 U.S. 110. 

3 . An ap'olicant is entitled to make both generic and 
specific claims . 

A generic claim is one which covers the invention 
in the broadest possible :c-:P.nner , while a specific 
claim is much narrov?er in character. Yfoere the apiDli- 
want's invention is capable of being embodied in 
several specie;?, he is entitled to a generic claim 
coverin;-_ all species, but may cover only one species 
in hi,3 specific claims. If he desires to cover the 
other rroeoies he must file sepsJ^ate applications 
therefor . 

Ex parte Eagle, 1870 CH. 157. 



VI 



4 . An applicant is entitled to ranke claims for com- 
binations and sub -0 0111131 nations . 

Net only may the applicant nake a claim for a 
combination of the elements required for the 
operation of the com.plete machine , but he may make 
a valid sub-com.bination claim for a less number cf 
elements where a nev/ and useful result is thereby 
acco-mplished. 

Howe V. William.s , Fed. Cas . #6, 778. 

Clark Blade & Razor Co . , v. Gillette Safety 
Razor Co - . 194 Ped. i^l. 

Chamber s etc . Co . v. Faries_, 54 Fed. 587, 588. 

Taylor v. Sawyer Spindle Co . , 75 Fed. 301, 309. 

Thorns on - Hous ton Etc . Co ♦ v. Black River Traction 
Co_. 135 Fed. 759, 763. 

5« The Claim^s are to be given reasonable range of 
equivalents . 

"The range of equivalents depends upon the ex- 
tent and nature of the invention. If the invention 
i;3 brop.d or primary in its character, the range of 
equivalents will be correspondingly broad, under 
the liberal construction which courts give to such 
inventi ons • " 

Miller v. Eagle Manufacturing Co « 151 U.S. 186,207, 

Sessions v. Romadka, 145 U.S. 29, giving liberal 
construction for a claim for a trunk fastener. 

Winans v. "Oe nm^e ad , 15 How. 330, holding a car body 
of a pjrramJ-dal form to be the mechanical equiva- 
lent of a car body in the form of a frustum of 
a c one . 

6. The courts have no right to enlarge a patent beyond 
the scope of its claim . 

Ke ys t one Br i dge Co « v. phoenix Iron Co ., 95U.3. 
27 4, 278. 

7 . Aggregation or cata^logue claims are void. 

"A combination of well knoi^i separate elements, 
each of v/hich, when combined, operates separe.taly 
and in its old way, and in which no new result 
is produced v/hich ca.nnot be a-s signed to the irde- 
pendent action of one or the other of the separ-ite 
elements, is r,n aggregation of parts merely, and 
is not patentable." 



VI 



5 

Standard Oil Co » v. Southern pr?xif ic Co » 54 Ped. 
521, 525. 

Ex P arte Ic.gan , 162 Off- Gaz . 538, holdixig a, claim 
which was a. rcinute inventory of every detail of 
applica^nt's device, void ae an aggregation. 

8 . Use of reference numerals or letters in Clr-ims . 

Letters a.nd numerals used in the specif icfition 
and di-awing to identify the various parts of the 
preferred form of the invention are sometimes used 
in the claim.s for the same purpose. This is ordin- 
arily not good practice, "because it renders the 
claim too specific, although it has heen hold the 
claim is not thereby limited to the specific 
mechanismi shown, unless the ji^ior art so rcG_uires. 

CampToell pr i nt i ng press and i^ffg. Co_. v. Harden 
64 Fed. 782-785. 

Knap p V. T;icrss , 150 U.S. 221, 228 

9 . The claims of a Patent will "be construed in the 
l ight of the comraercial' use or co'amercial success 
of t he i nv o nt ion . 

Boston Woven Hose & Ruhhe r Co . v . Pennsylvania 
Rubber C o . , 164 Fed. 557 . 

Hall S i gna 1 Co . v. General Ry . Signal Co • , 169 
'Fed, 290. 

10 . The claims should not be needlessly multiplied . 

"'jyhere a specification by ambiguity and a need- 
less multiplication of nebulotis claims is calcu- 
lated to deceive and m.islead the public, the 
patent is void." 

CcJ-lton V. Bo Ice e , 17 Wall. 465, 4 72. 

11. Claims allowed by the Patent Office must be read an d 
interpreted with reference to rejected claim.s . 

An allowed claim, cannot be constru.ed so as to 
cover either what was rejected by the Patent Office 
or disclosed by prior devices. 

Tiubbell V. united States , 179, U.S. 77, SO. 

12. A claim. m.ust not include alternative elerie nts. 

An alternative cla-im is one v:hich is indefinite 
as to one of its elements, substitutes tlicrefor 
being specified. 



^'■\ 



irr 



Bxc.mp lep : 

"Brick or the like" 
Calo.well & Parr, 120 Off. Gaz . 2125. 

"Asbestos or its equivalent" 
Ex Parte Phill ips. 135 Off. Gas. 1801 

"Brake or locking device" 

E;^ parte Leor , 164 Off- Gaz. 250. 

13 . All claj-ms must "be for operative means . 

B liss V. Brooklyn . 3 Eed. Gas. 707, #1, 546 

T orrant v. S uluth L uraber Co., 30 Pod. 830. 

]v- anhattan Book Casing Co . , v. E- C_. Fuller 
Co. 27 4 Fed. 9« 



D'l 



14 . Function a l C laims are i nvali d . 

"A valid patent cannot "be secured for a function, 
a mode of operation or a result, separate from the 
means or mechanical devices "by which the result 
is accomplished." 

Union Match jGo. v. Diamond Match Co ♦ 162 Fed. 
148, 151.' 

O'Reilly V. Morse . 15 Hov.u 520, 

15. Intangible El e ments in a Claim are not permitted . 

Exam.p le s : 

Openings, slots or grooves. 

To impart such matters into a claim., they must 
"be mentioned as associated v/ith tangible elem-cnts. 

Ex Parte Day in, 99 Off. Gaz. 4 52; 1002 C.I). 251 

16 . Use in claims of "j;/[ea.ns", "idechanisFx" , and "Appliance s" • 

As inclusive term.s , the v.-.ords "miea.ns", "mechanism", 
and "a.pplia.nces" are often employed in claims, llo 
general rule can be laid down concerning the emiployment 
of such words, except that they should be given a breadth 
of meaning commensurate with the extent and importance of 
the invention. 

Ex Parte Pa ch older , 51 Off- Gaz. 29 5; 1S90 C.D. 55. 



VI 



17 . Eleinentg -gust be positively, not inferentia.lly, get 
forth ill c, claim. 

In ro Vinls , 95 Cff- Gaz . 20ei; 1901, C-u. 124 
In re Dodge , 125 Off. Gas. 665; 1906 C .D . 439 

IS . Form, loca.ticn and sequence of elements . 

■ "Form, location and yequence of eloynents are all im- 
material, unless form or location or sequence is es- 
sential to the result, or indispensable, oy reason of 
the state of the cxt, to tno novelty cf tue claim." 

Adams v. Folger , 120 "Fed. 260, 263. 



GOLUjIBIA UlTIVERSITY lH THE CITY 01 xIS¥ YORE 
COURSE OF P-^TEllT M'f 
C0PYRIGH3D 1922 
Zverott 21. Curtis 



oYlTOPoIS CP LECTTTRE VII 

A. The 'Ezzpx:dn:..t ion 

1. affect of filing apiglice.tion 

Upon tlie filing of any applicaticn for patent 
it is tlie duty of the ?ri.tonG Cffj.ce to cause an 
exaiTii nation to be made. 

2. gorr-al Rccej-ot 

VJhen a,n applicaticn is properly filed, a forma,! 
receipt is sent to the applicrjnt or his attorney, 
acknowledging receipt, setting forth the date of 
receipt, serial nurfoer, and title of the: i.r.-'-e.;it: on. 

3. Statutory prevision 

"On the filing of any such applicaticn and the 
pa^rneiit of the fees required hy law, the Coiranis- 
ibner of patents shall cause an examination to he 
made of the alleged ne\7 invention cr discovery; 
and if on such examination it shall appear that 
the cle.imant is .justly entitled to a patent under 
the lai7, and th^t the same is sufficiently i-.seful 
and important, the Comfnissioner shall issue a 
patent therefor." 

U.S. Revised Stats. Sec 4893. 



4. Order of 3xaminaticn . 

Applications pre first classified, and then are 
taken up in reg-j.lar order within the class and 
examined ana disposed of. Amended applications 
have preference over nc.v applications. 

Patent Office Rule 65. 



5. pi ovale; 



' n ■-■• ,o . 



vhe following cases a.rc- preferred over all 
oths'xs in the ordjr erxu:rnorated: 

a. Applications ii:Tportr.nt to some "brn,nch of 
the pu"blic Scjrvice. 

D_. Applications for reissues. 

c_. Oa^es romrndad Toy an appellate tribunal. 

d. Applic'ations interfering v.'-itli allovred ap- 
licationc; cr unexpired p".tcnts. 

e_. Reno?:ed or rovised applications . 

f . Applications filed -more than tv/elvo months 
af'cer filing of foreign application for 
saire invention. 

Patent Offic 



6. pj irst 0:'"fice Action . 

Upon the application "being reached in regula.r 
order hy the Examiner, he v/ill in his first of- 
fice letter give consideration to the follo\7ing: 

a. Formal requirements and the pointing out of 
errors and m.is takes. 

D_. Consideration of the merits, including 
division. 

Note , hoY.'ever , tha.t if division is required, 
action on tne m-erits is ordinarily suspended 
until division is made or the requirement 
withdrawn. 

7 . D ivision 

Livisicn is usu^ally required where the appli- 
cant has joined in one application two or more 
independent inventions. Where, however, such 
inventions are dependent upon each other and 
mutually contrioute to produce a single result, 
they iuPvy he joined. J'rom. the requirement of 
division, an appeal lies to the Examdners in 
Chief. If division is made, an application 
should be promptly filed for the mi?-tter divided 
out, otherwise dedication to public may be pre- 
sumed upon issue of original patent before filing 
of the divisional applica,tion. 



■711 



paton t Cfflce Rr.les 41, 4?. 

Ex prrte RoT^erts , 40 Off. Gaz . 573. 

But vrhere it clearly c.ppcars that the inventions 
?xc absolutely independent , no such dedice-tion c^'.n 
be prc-st^med end x,he diTisional application ma.y 
be filed any tiiiie within two years after the issue 
of the priginal patent. 

Sx parte irullen & Mullen , 50 Off - Gan • 357 . 

8. Gc-narp.l Ru,les of practice. 



(1) ^'- 



The first :xtion (unless there are vital 
ocjocLior.s as to fcrm) should state all the. 
objections to over3- part of the application.bcth 
as to form rxid merits, and the best references 
should be cited. 

[2) The application as a whole should not be 
rejocGod, but only the cla.irns thereof. 

(5) Hojection should be in plain, uniriiEtaloablo 
terms, and the --A^ord "reject" should be used. 

(4) Pinal rejection isay '->e made before all 
matters of form are settled, but fcrirjal matter 
should be disposed of before an appeal is taken. 

■(5) ?inal rejection should net be given until 
all the non-allov/rble claims are in condition for 
ouch action. 

Ex Parte Sasti-nan , 1891 C.D. I'^S . 

Ex Parte Sevory , 1901 C.D. 244 

9 . Advancing ?.-opli cat ions for Examina.tion . 

"Applications v;ilL. not be advanced for examina- 
tion e::cep-cing upon order of the COirisissioner 
either to expedite the business of the office or 
upon a verified shewing that delay \7ill probabl-/ 
ca-use the applicant serious and irropar -.ble injujry 

patent Office Rule 65 . 

10 . Sxariiners :~iust act on the rxrits \7hero invention 
is r ^ ?.d i ly under s t o od . 

"■Where the specif i cat i en and clai'ms arc such 
that the invention may be readily understood, the 

examination of a ccmplete Cipplication and the 



rli 



VII 



action thereoxi v/ill "bc; directed tiTroughout to 
the iriarits ; "'rut in each lottei- the e.x.:\miner shall 
state or refer to all his ohiections . ^' 

pate lit Office Rule 34 . 

11. Final Allowance on First Office Action . 

If the ICrcariiiner after making his examination in 
connection :7ith the prior art, finds that the ?.p- 
plication is unolDjectioriaDle both as to forni and 
suhstance , he will as his first office action 
issue notice of final allowance. Such a.ction is, 
however, very rare. 

B. EE.^^HlCTIOilS AKD KEFERSi'CSS 

1. Re.iection of claims and notice to applicant . 

Inhere any of tne claims of the application arc 
rejected, the applicant or his attorney must "be 
notified, and given full and precise reasons for 
stich rejection, together with such infcrmatioaa 
and references 9.s miglit "be useful in aiding the 
applicant to .judge of the propriety of further 
prosecuting his a.pplication cr of altering his 
specification. If the applicant after receiving 
such notice still persists in his claim with or 
v/ithout altering his snecif ication, the applic-a- 
tion shall oe re-examined, and if the claim be 
again rejected, the reasons therefor must be 
fully and precisely stated. 

U.S . Revised Stat? . Sec. 4903. 

Patent Office Rule 05. 

2 . Crenaral Grounds for Rejection . 

The general grounds for the rejection of an 
application s^nd claims include the statutory 
grounds set forth inTj.3. Revised Statutes Sec. 
4886. ClaiiiS miay also be rejected because 
broader than the specification, because of du- 
plication, inopcrativonesy, insufficiency cf 
disclosure in the specification, etc. 

3 . Citation of Ref oi'encep . 

It is the duty cf the examiner, in acting on 
the merits, to m.ake a thorough investigation of 
the prior art, cud. upon rejection, to cite the 
best references. The pertinenc;,' of such refer- 
ences v.here not obvious m-ust be clerrly -explained., 

Patent Office Rule 66. 



Doirestic and forGign patents, when cited, must 
be fully identified so that the applicant may be 
able to locate the sanie. 

Patent Office Rule 66. 

It is common for aEt examiner to cite several 
references a.gainst a claim on the ground that no 
invention resides in the combination of old el- 
ements shov/n in the prior devices. 'Where, hov/ever , 
more than three references containing different 
elements are required to meet a combination claim, 
it is ordinarily considered good practiisre to allow 
the claim. 

4 . Pact s \7ith in Icro^-vl edge of Office Emplo'^es and 

Af i'idav.i t ti:o :.: e on . 

Where reference is made by the Examiner to facts 
;7ithin the personal knowledge of an employee of the 
office, and data shal]. be as specific as possible, 
a.nd under oath if requested by the applicant, v/ho 
in such case may offer a,ffidavits in opposition 
thereto . 

Patent Office Rule 66. • 

5 . Adverse Decisions vlthout rejection of claims . 

"V/lienever, in the treatment of an ex parte appli- 
cation, an adverse decision is m.ade upon any prc- 
limdnary oi- intermediate question, without the 
rejection of a.ny claimi, notice thereof, together 
v/ith the reasons therefor, will be given to the ap- 
plicant, in order that he ma]/ judge of the propriety 
of the action. If, after receiving this notice, he 
traverse the propriety of the action, the matter 
will be reconsidered." 

Patent Office Rule 67 . 

fil'ElIDJIIEi-TTS MD ACTIONS 3Y APPLICANTS 

1. Action of a-prilicant after Rejection . 

After rejection, the applicant, may formally 
abandon his application, or he may amend it, or 
he ma,y insist upon his original application as 
filed and take issue v/ith the Examiner- 



r 



\ 



71 1 



2. Right to Amend r.nd Requisites of Amendments. 

"The r.pplicr.nt has a right to amend "before or 
cvfter the first rejection or action; and he may 
aniond ?.s often as the examiner presents new 
references or rc?.sons for rejection. In so amend- 
ing the applicant mT^st clearly point out all the 
patentahlo novelty v/hich he thinks the case pre- 
sents in viev; of the sta.te of the art disclosed by 
the references cited or the objections made. HQ 
■nust also sho\7 hov; the amendments avoid such 
references or .objections . 

patent Office Rule 68 . 

Hote : \l/hile the right to amend is specifically 
recognized in- the above rule, such right under the 
Patent Laws is founded solely upon inference from 
the v/ording of U- S. Rev. Stats. 4888, setting 
orth the requisites of an application. 



J 



parks V. Booth, 102 U.S. 95. 

3 . Time v/ithin which to Amend . 

Amendment or other action on the part of the 
applicant responsive to the last official E,ction 
must be made or taken v/ithin one year thereafter 
or the a,pplica,tion becomes aba,ndoned- 

U.S. Rev . Stats . 4894 

Patent Office Rule 171 

But even after the ab-andonment of the old ap- 
;&lication, a nev; application for the same subject 
matter may be filed and acted upon anew. 

4. Request for Reconsideration . 

To be entitled to reconsideration, the applicant 
must make r.Titten request therefor, and at the 
same time must specifically poiint out the supposed 
errors of the Examiner and respond in detail to 
all office objections. Reconsideration will not 
be granted upon the mere allegation that the 
Exainincr has erred. 

Patent Office Rule 69. 

5. ITovY Matter . 

Ai'nei-idmonts of the drawing or specification must 
conicrm to the application as originally filed. 

patent Office Rule 70. 



^ ^ 



VII 



"The appliciint will not "be permitted., under 
the guide of an araendmant, to introduce into his 
application a wholly different invention, nor to 
chiinge the construction and operation of an in- 
Ysntion which has "been fully described and shown, 
nor to present a different or prefer.'r'.TDle form of 
his invention." 

Ex parte Snyder , 22 Off- Gas. 1975. 

In the case of nev; rratter, a new application 
may te filed. 

Ex Parte Thixrinond . 37 Off. Gaz . 217. 

o. In .acc uracies cr Unnecessary Prolixity. 

: ''The specif ica.tion and dra\"ing must be amended 
and revised v/hen required, to correct inaccuracies 
of descrip'ticn or unnecessary prolixity, and to se- 

■ cure correspondence be-cveen the claim, the specifi- 
ca,tion and the dra--.'-ing. But no change in the 
drawing may be made except by written permission of 
the office and after a photogra,phic copy of the 
drawing as originally presented has been filed." 

Patent Office Rule 71- 

7 . Specification not to be returned . 

After filing of application, the office will not 
return the original specification for any purpose , 
but ¥/ill furnish copies upon the usual terms . 

Patent Office Rule 72. 

8 . Retur n of drr',wing for correction . 

The drawing will be returned only for such cor- 
rections as cannot be made by the office, and even 
in such ca-se a photographic copy of the original 
drawing must be filed. 

P atent Of f ic_e Rule 72, 

9 . Amendmen'^s btu s t be Specific . 

Amendments must be •'Written upon one side of 
sheets of paper separate from the original applica- 
tion., and must specify the exa,ct words to be erased 
or inserted. The precise point where the erasure 
or insertion is to be made must be indicated. 

Patent Office Rule 75. 



V ... 



VII 8 

1 . A- raon'^ment of AriCndod Clav.se . 

\'Ihcii a clause, which hcis cocr inserted "by ariend- 
ment, is also to be amended, such clause as finally 
amended should te vrholly x'ewi"itten. 

Patent Office Rule 74. 

11. Claims not Specif ic ally Ee.j ected ox- Referred to 
by the Examiner, are inf o re ntially allov/ed . 

12. Final Rejection. 



7inal rejection occui's after Exarainer has twice 
acted upon the same question adversely to the ap- 
licantj as vriiere he has tv/ice rejected the claims , 
or twice insisted upon the requirement of division. 
Such action is a prerequisite to an appeal to the 
Sxa,miners in Chief on the merits. 

patent Office Rule s 153 et seq. 

V/hile the v/ords ''final rejection" are used tech- 
nica.lly in the office to mean rejection upon the 
merits, it is to be noted that on matters "of form 
where the exam.iner has twice acted, a petition 
will lie to the Commissioner, who may grant a 
hearing in his discretion. 

Patent Office Rule 142 . 

Before appeal from the final rejection of the 
claims can be madd , all non-allowable claims must 
ha"vo been twice rejected a,nd all matters sett3.ed 
not affecting the merits of the invention. 

• pa t? nt Office Rule 134 . 

Ex Pa rte Eastman , 57 Off. Craz . 410. 

Ex Pa rte 3every, 1901 C.D. 244. 

13 . Affidavits in Ansv/er to Rejection . 

A rejection m^ay be met by affidavits in the fol- 
io wi ng i ns t an cos; 

a. Where applica,nt makes oath as to completion 
of his invention, prior to foreign p?.tent or 
publication or prior to dom.estic patent 
shoving but not claiming invention a,nd more 
than two years prior to applica.nfs filing 
date . 

Patent Office Rule 7 5. 



■-'::> 



Mil 



t. Affidavits to meet rejection on the ground of 
persoHcal lonowledge of Patent Office Employee, 
public use or sale, capaloility of operation 
or prior reference, inoperativeness, frivclity, 
or injurious character of invention, in other 
cases permission of Commissioner must be secured. 

Patent Office Rule 76. 

Suspension of Application . 

Suspensions v/ill only be granted by the Examiner 
for good and sufficient reasons, and for a reason- 
a.ble tim.e specified. Additional suspensions after 
the first suspension must be approved by the 
CojTiCJissioner . 

Office Rule 77. 



15. Amendments after Appeal . 

After final rejection and even after an appeal 
has been t?.i:en, amendments cancelling claims or 
presenting those rejected in better form for 
consideration on appeal may be admitted if prompt 
action is taken. For amendm.ents touching the 
merits, a showing of good and sufficient reason 
for their late presenta.tion must be made. 

Patent Office Rule 68 . 

16. Amendments o-fter Motice of Allowance . 

"Aniendments after the notice of allov/ance of 
an application will not be permitted as a miatter 
of right, but ma3/ be m-afc , if the specification 
has not been printed, on the recommendation of the 
prim.ary examiner, approved by the Commissioner, 
without Y/ithdrawing the case fromi issue." 

Patent Office Rule 78, 

17. Issue . 

A patent will issue upon an application after 
notice of final allov/ance and the payment of the 
fina,l fee v/ithin six m.onths of the date of such 
allowance. 

Patent Office Rule 164. 

18. Withdrawal from. Issue . 

After notice of allowance, an application will 
not be v/ithdra\?n from, issue except by approval of 
the Commissioner. 



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COKMBIA UKIVERSITY 121 TK3 CITY C? i^^^ YCEK 
COURSE OH PATEITT UC^ 

COPYRIGHT , 1922 

Ev^jrett IT. Curtis 



Sl'lTOPSIS OP lECTURa VI 11. 

ABAIJDOKISNT OF APPLICATION POR PATENT 

!• 3y failure to complete and file all parts of 
ap p 1 i c g t i n wi thin o nc- ye ar . 

U.3 . Revised Stats . Sec. 4894. 

Patent Office Rules 31, 171. 

2 . B;'.^ f?alur'o to Torosecute an application within one 
yesir p.fte r any action thereo n, i cid 

To revive the application in either of the above 
cases after abandcn-ment it must "ce shown to the 
satisfaction of the commissioner, that the delay 
was unavoidahle . This rule is strictly interpreted. 

Patent Office Rule 17 2. 



Negligence of attorney/ insufficient to excuse 
delT.y . 

Ex parte Collins , 97 Off. Gaz . 137 2. 

3 . By failure to pay the final fee within six months 
after final allowance , and to renew the same 
v/ithin tv.'o -/cars thereafter . 

Patent Offic e Rules 17 4 , 17 5 . 

Note: In all of the aocve cases, the ordinary rule 
as to putlic use or sale under the statute is ap- 
plicahle . Thus t'here is nothing to prevent the ap- 
plicant from filing another application for the same 
subject matter as the first., unless the statutory 
bar of two yea,rs ha.s run, or unless it is shown the 
invention ha,s been a.bandoned. 

B. ABANDOMffiNT OP Iir\/ENTION 

1. By abandonment of invention is meant the dedication to 
the public 01' ail of the rights ol' the inventor thereto. 



2 . Aloarxdonincnt mr.y "be actual or constru ctive. 

Actual abandonment occurs vrhere it is intentional. 
Constructive a"bandoniTient occurs by reason of the acts 
of the inventor, as where he makes his invention 
public and looks on and permits others freely to use 
it without objection, or assertion of claim to the 
invention of v/hich the public might take notice. 

pennock v. njalcguc , 2 peters 1, 13. 

Constructive abandonment also occurs because of 
the lapse of statutory periods within v;hich the 
inventor is required to act. 

3. Bffc-ct of abandonment 

\'yhere the invention ha.s once been abandoned, the 
right to a patent is gone. "This inchoate right, 
once gone, cannot afterward be resumed at his 
pleasure; for where gifts are once made to the pub- 
lic in this way, they become absolute." 

Fen nock v. Dialogue , 2 Peters, 1, 16. 

4. Abandonment is a question of fact . 

Bat tin v. Tagger t , 17 How. 84. 

5. Hov/ actual a.bandonment may be accom.r)lished . 

Actual abandonment to the public may occur: 

a. 3y express declarations outside of the 
Patent Office. 

Kendall v. VJinsor , 21 Kow. 322, 329. 

b. 3y express declr.rations during the Patent 
Office proceedings, as for example, - 

(1) Wliero the inventor forma.lly abandons his 
invention as set forth in certain claims. 

Leggett V. Ave ry , 101 U.S. 256, 259. 

(2) Where the inventor files a disclaimer under 
Tj.3. Revised 3tats . Sec. 4917. 

6. Constructive Abandonment under U. 3- Revised 
S tatu te s PC curs ; 

a. \7hero the irrventor used or permitted the use 
of the invention in public for a period of 
t'.70 years pi^ior to the date of his a,pplication 
for patent. 



'i 



w • 



U . 3 . Rev . Stats . 4886, 

^. v/here the inventor did not file iiis application 
in this country within twelve months of the 
filing date of his foreign application, or 
within four vnonths in case of a design.. 

U.S . Rev. 3tats . Sec. 4887. 

Aoandoni'nent ly Laches. 



, The legal meaning of the word "laches" is 
"inexcusable delay in asserting a right". 24 Gyc . 
840. Accordingly abandonment by laches occurs 
where an inventor unreasonably delays In applying 
for a patent after he has completed his invention. 

Thus a delay of eight or nine years, unexcused, 
was held to constitute abandonment. 

Consolidated Fruit rar Company v. Wr ignt , 94 U.S. 
92 ^, Ii.vol'.^ing a patent for fruit j ar s ) 

Excuses for dele.-y may be extreme poverty, inven- 
tor in hostile country at war with United States, 
mental unsoundness, etc. 

Smith V. Tjental Vulcanite Company , 93, U.S. 486,491 

Cravor v. ye-/hr ich , 31 Wed, 607, 

Ballard v. Pittsburgh , 12 Fed. 784. 

Where an inventor ccncealshis invention for the 
purpose of pirofit during a long period of years, with 
the purpose of applying for a patent when such secrecy 
cotild no longer be maintained, and ■ use has been 
begun by others of such invention, his application for 
patent maybe refused beca.use of constructivG a.bandon- 
E^ent or forfeiture of his right to a, patent. 

Mo'.ver v. Euel l, 88 Off. C-as . 191 

Macbe tn -Evens Glas ,i- Co . v- General Electric Co ■ 
24 6, Fed. 59 5. 

S . Abandonment does not result after issuance of let - 
t e r s patent becc.use of non-user of the invention . 

¥£ l-ke r £n :^c.- tents , Sec. 105. 

RlilSSUBS 

1. Statuto ry Pr ovi s i on . 

"v/henever any patent is inoperative or invalid, hj 
reason of a defective or insufficient specification, 



r 



or iDy reason of the patentee claiming as his ovm in- 
Tention or discovery mere than he had a right to ci:-"-im 
as nov/', if the error has arisen by inadvertence, 
accident, or mistake, and vvithout any fraudulent or 
deceptive intention, the Commissioner shall, on the 
sur re. rider of such patent and the payment of the iuty 
required "by law, canse a nev- patent for the sam.e inven- 
tion, and in accordance with the corrected specification, 
to he issued to the patentee, or, in case of his dcc-^th or 
of an assignment of the '.vhcle or any undivided pari, of 
the original patent, then to his executors, administra- 
tors, or assigns, for the unexpired part of the term of 
the origins,! patent." 

U.S . Revise ! Stats . 4916. 

2. Reissue ATj-nlicat ions . 

a. 3£ust he made and sworn to oy inventor if living. 

Patent Office Rule 8 5. 

h. Must he accompanied hy order far certified copy 
of ahstract of title to he placed in the file 
giving the names of the assignees, all of -vvhom 
must assent to the application. 

Patent Office Rule 86. 

c . Reis sue Oath . 

"Applicants for reissue, in addition to the 
requirements of the first sentence of Rule 46, 
must also file with their petitions s. statemicnt 
on oath as follows: 

(a) That applic8.nt very helieves the original 
patent to he inoperative or inva-lid, and 
the reason why. 

(h) VThen it is cla-imed that such patent is 
so inoperative or invalid "cy res.son of 
a defective or insufficient specification," 
particularly specifying such defects or 
insufficiencies. 

(c) 'When it is claimed' tiat such patent is 
inopera.tive or invalid "oy reason of the 
patentee claimhng as his ov/n invention or 
discovery more than he had a right to claim 
3.S new", distinctly specifying the part of 
parts so alleged to have heen improperly 
c la i m.e d as new . 



"\ 



v:ii 



(d} Particularly specifying tlie «rrcxrs arhicb. it 
is claiined constitute the inadvertence, 
accident, or mistake relied upon, and now 
they aros^ or occurred. 

(e) That said errors arose "without any fraudu- 
lent or deceptive intention" on the part of 
the applicant". 

Patent Office Rule, 87 . 

d_. I-Iev/ matter not to "be introduced in the reissue 

sr)8cif ication . 

Patent Office Rule 88. 

e . Original patent must accompany a^pplication. with 
offer of surrender . 

patent Office Rule 9 1. 

3. Purpose of Statute (Sec- 4916) 

"the plain purpose of this section is to give the 
patentee an opportunity to make valid and operative 
that which was "before invalid and inoperative." 

McCormick Harvesting Co . v. Aultman, 169 U.S. 606. 

4. Delay in Filing Application . 

"Due diligence must be exercised in discovering 
the mistake in the original patent, and ... if it 
(a reissue) be sought for the purpose of enlarging 
the claim, the lapse of two years will ordinarily, 
thou^ not always, be treated as evidence of aban- 
donment of the nev/ matter to the public." 

Tcpliff V. Topliff . 145 U.S. 156, 170-171 

Wollensack v. Reiher , 115, U.S. 96, 101. 

5. Reissue application must be for same invention as 
that embodied in the patent^ 

"Letters patent reissued for an invention sub- 
stantially different from* that embodied in the 
original patent are void and csf no effect, as no 
.jurisdiction to grant such a patent is conferred 
by any act of Congress upon the Commissioner." 

Seymour v. Osborne , 11 V/all. 516. 

5. ""nonerative or Invalid" patent. 



"To justify a reissue it is not nocassary that 
the patent "be w?aolly inoparatiTO or iii-"-aliJ. It is 
sufficient if it fail to secure to- the ps^tonte-i ail 
of that which he has invented and claimed." 

Hohbs V. Beehh, 180 U.S. o&2 . 394, vfhBTS patent 
v.-a.s reissued to correct an oSvious error ih o.ie 
of the drawings. 

7 . "PefetStive or insufficient specification" . 

"The T/ord 'defective' and the v'ord ' irsuff icicnt ' 
are not synonymous o"f this statute, as at first 
thought they jjiay appear to Le . . The former v/crd 
means 'had', and the latter ireans 'lacking'. A de- 
scription may he complete, v/hile it is ohscure in 
some of its parts. In such a care, it is defective. 
On the other hand, it may "bo perfectly clear, aslar 
a,s it goes, v/hile omitting all references to some 
parts of the thing described. In such a caee it is 
insufficient-" 

Yifalker on Pata nts , Sec. £17. 

8. Correction of Srrors "arise n by inalverton ce , acci- 
dent, or mistake " . 

Correction of errors not requiring an enlargement 
of the claims may be permitted ujfxyn a proper showing 
8.nd promp t appl i cation. 

Great strictness, however, is required where en- 
larged claims -^xc sought, and where it rmvt be sho^ra 
that an actual bona fide mistake has bean inadver- 
tently coiumittod such as a courL of Equity within 
its ordinary jurisdiction would correct. 

Mille r v. Brass Co., 104 U.S. 350. 

9. ?rnero the cl a ims of the pa.tont are too broa d, 
the usucal remedy is disclaim.er, not reissue * 

V/a Ike r on Patents . Sec. 216. 

10. Reissue with Enlarged Claims . 

a. The practice of the pa,tent Office was formerly 
very liberal relative to granting reissue 
patents v/ith enlarged claims - 

b. This practice wa^s changed by Filler v. Erc:,ps C_0', 
104 U.S. 350 (1881) involving a patent twice re- 
issued, and holding & delay of 15 yjars in 
£i,px;lying for reissue unreasonable where enlarged 
claims were sought. "Reissues for the enlargeme:-t 



of cloAros should "be the exception not the rule", 
(page 355) . Since this decision the Patent Office 
has looon very strict in reissue cases seeking to 
broaden the clains . 

c. present Practice . 

It is the present practice to allow an applica- 
tion for reissue for enlai^ged claims where it iz 
apparent it would Toe unjust to the inventor to 
act otherwise, provided it is evident there hziS 
been a mistake, that there has been no want of 
reasonable diligence, and that the rights of 
third persons have not intervened. 

To-Qliff V. Topliff . 145 U.S. 156, 171. 

D. PISCIABER 

1 . S tatutory provision . 

"vftienever , through inadvertence, accident, or 
mistake, and without any fraudulent or deceptive 
intention, a patentee has clained more than thxat 
of which he was the original or first inventor or 
discoverer, his patent shall be valid for all that 
part which is truly and iustly his own, provided the 
same is a, material or substeaitia.l part of the thing 
patented; and any such patentee, his heirs or assigns, 
v/hether of the whole or any sectional interest therein, 
jfcaj/, on payment of the fee required by law, make dis- 
claimer of such parts of the thing patented as he 
shall not choose to claim or to hold by virtue of 
the patent or assignment, stating therein the extent 
of his interest in such patent." 

U.S . Revised Stats . , Sec. 4917. 

2 . Form of Disclaimer . 

"Such disclaimer shall be it. writing, attested 
by one or more -witnesses, andrecorded in the Patent 
Office ." 

U.S . Revised Stats . Sec 4917. 

5. Usually employed for Surrender of Claims . 

"A disclaimer is usually and properly employed for 
the surrender of a separate claim in o. patent, or 
some other distinct and separable matter, v/hich can 
be excinded without mutilating or changing what is 
left str?.nding." 

Hailes V. Albany Stove Co-, 123 U.S. 582, 587. 



VIII 8 

4 . Unreasonable Delay in F iling D isclaimer * 

If a patentee unreasonably neglects or delays tc 
file a necessary disclaimer, he is not entitled 
to bring suit upon his patent. 

U ♦ S . Revised Stats . Sec. 4922. 
Walker on Patents , Sees. 203-204 

Even where it appears there was no unreasonable 
delay, and judgment or docreehas been rendered in 
a case requiring disclaimer, no costs can be re- 
covered in the a.bsence of disclaimer. 

U.S. Revised Stats. Sec. 2922. 

S. ca?.'MISSI0lIER'3 CERTIFICAIE OF CORRECTK® 

Any mistake occuring through the fau^it of the 
Patent Office , may be corrected by certificate of the 
Commissioner, and a printed copy thereof attached to 
each printed specification and drav/ing. If such 
m.istake constitutes legal ground for reissue, such 
reissue can be had without charge at request of 
patentee . 

patent Office Rule 170. 



GOLtJTIBIA UlTIVERSITY Hi THE CITY OP IJEW YORK 
COURSE OE PATENT LAW 
COPYRIGHT 1922 
Everett IT. Curtis 



SY1'!0?SI3 0? LECTURE IX 



A. irTSREEPJSlTCES- 

1 . jtatutory provision . 

"Whenever an application is iriade for a patent 
which, in the opinion of the Connnlssioner , \7ould 
interfere with any pending application, or with 
anj- une:-pired patent, he shp.ll give notice thereof 
to the applica.nts , or a,pplicant and patentee , as 
the case icay he, and shall direct the primary 
examiner to proceed to deternine the question of 
priority of invention. And the ConTmissicner may 
issue a patent to the party v/ho is adjudged the 
prior inventor, unless the a.dverse pa.rty appeals 
froiT the decision cf Lhe prinnry examiner, or of 
the hoard of examiner s -in-chief , as the case may 
be, within such time, not less than tv/entj?-.-. days , 
as the Ccnmissioner shall presence. " 

U. S- Revised Stats . Sec. 4904 

2 . I nt er f e re nee Se f i ne d . 

"An interference is a proceeding instituted for 
the purpose of determining the question cf prior- 
ity of invention between two or more parties 
clshming substantially the same patents.hle invention 

patent Of f i ce Rule 95 . 

"Interference means a dispute on the question of 
priority cf invention." 

U.S . 6: 'Foreign Salamander Feltin g Co • v. Asbestos 

Peltine Co • , 4 Ted- 315, c315. 

3. Junior Party and Senior Party . 

As a general rule the Senior party is the party 
who first files his e.pplicaticn in the Patent Office: 



r^ 



•-■'\ 



the Junior party is he who files his application 
last and upon whom lies the hurden of proof. In 
the case of continuing applications, however, this 
order may be changed and the "burden shifted on 
motion. 

4 . Special demand for statement as to date of inven - 
tion from Junior party . 

"In order to ascertain whether any question of 
priority arises the Commissioner may call upon 
any Junior applica.nt to state in v.rriting the date 
vrhen ho conceived the invention under consideration 
All statements filed in compliance with this rule 
will he returned to the pai'ties filing them^. in 
case the applicant makes no reply v/ithin the time 
specified, not less than ten days, the Commissioner 
will proce^jd upon the a,ssum.ption that said date is 
the date of the oath attached to the application." 

Patent Office Rule 93 . 

5 . Interference declared "betv/een whom . 

. Interf ei-ence may be declared: 

_a. Between two original applications. 

h. Between tv/o reissue applications. 

c_. Between an original application and a reissue 

application. 

d_. Between an original or reissue application 
and an unexpired patent. 

Patent Office Rule 94. 



In case of a patent, v/herc the filing date of an 
application is subsequent thereto, applicant mu.st 
file affidavit showing invention before filing date 
of patentee. Ibid . 

l]ote that a patent issued mxre than two years 
prior to thu filing da.to of an application cannot 
be throv.'-n into interference therewith. This is 
because of the statutory bar . 

U- S . Revise d Stats . Sec- 4885. 

Settloi.icnt of pre^liminary questions . 

Before an interference is declared 8,11 prclimin?.ry 
questions miist be settled, and the issue clearly 
defiiied. The invention v/hich is tc form the subject 



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'■-■'N 



of the controversy must have been patented to one of 
the parties or decided to he patentable with alloY>rahle 



Patent Office Rule 95. 

7 . 3ugg6.8tion of ClaiTns . 

It is the present practice of the office in the 
case of a possible interference, to suggest to each 
partj' such clairos a,s are necessary to cover the same 
invention. Usuallj,'' the exact language of pertinent 
clairfiS of each party is suggested to the other. If 
such claims are not adopted by either party by 
amendm^ent within a specified time, he is held to 
have disclaimed the same. 

Patent Office Rule 96. 

Claims m-ay also be added on motion and by amend- 
ment within 30 daj^s a,fter filing of prelim-inary 
statements under Patent Office Rule 109. 

8 . Jurisdiction of Examiner of interferences and 
La\¥ Exam.iner . 

Upon the institution and declaration of sai inter- 
ference, the Examiner of Interferences takes juris- 
diction of the same, but the Lav/ Exam.inor is to 
determine all mxotions to dissolve an interference 
and the like . 

Patent Office Rules 101, 122. 

9 , D'eclgjaticn of interference and Sotice to the 
parties . 

An interference is formally declared by forward- 
ing notices of interference to the pexties or their 
attorneys by the Sxa-mdner of Interferences, and 
tim^es are set within which preliminary statements 
m.ust be filed. 

Patent Office Rules 102, 103. 

10- Disclaimer . 

Either party with the v.Titten consent of his 
assignee, if p.nj, may disclaim^ the invention in 
issue and avoid the continuance of the interference. 
Such disclaimer should be made before thedate of 
the filing of his preliminary statement. 

patent Office Rule 107 . 



^■^T\ 



11. Contents of Pr e 1 imi ngg- y Statement , 
a. Domestic Pa,tents 



Each party to the interference must file a 
concise preliminary statement under oath, with- 
in the required timf., shoving: 

(1) The da.te of Conception. 

(5) The date of first dra.v/ing and the date 
of first A^ritten description. 

(o) The date of first disclosure to others. 

(4) The date of reduction to pra-ctice. 

( o) Extent of use 

(6) The date a„nd numiher of any foreign ap- 
li cat ion filed v/ithin tv/elve months. 

t. Foreign Patents . 

Yi/hen the invention was made abroad, the 
statement must also show that the applicant 
made the invention, other patents therefor, 
printed publications describing the invention, 
and • the time -and circumstances of introduc- 
tion of the invention into this country. 

patent Office pule 110, 
£* Strict Construction . 

preliminary statements should be carefully 
prepared, as parties are held strictly in their 
proofs to the dates set up in them- 

Patent- Office Rul_e_ 110. 

Boyce , 118 Off. Gaz . 2534. 



The facts set forth in the preliminary 
sta-tements sxe peculiarly within the knowledge- 
of the inventor, a.nd are difficult of contradic- 
tion by p.n adverstiry. It is important to the 
admhnistrp.tion of justice thr,t the inventor be 
required to state his dates with rej.LSon?.ble cer- 
tainty before notice cf his -adversary's claim. 

Cross V. Philli-QS , 1899 Q..D, 342 

12 . W ncn Preliminary Gtatements are opened for 

Inspection. 



''-\ 




The preliminary otatements are not opened 
to the inspection of the opposing parties until 
each statement is filed or the time for filing 
has expired. A party in default has no rJight to 
such inspection until he has filed his statement, 
v/aived such filing, or stands on his record date. 

the filing 
)f access 

Patent Office Rule_ 111. 

13 . Ame n dm-e n t of ? i' e 1 i mi n ar y S t a t e me n t . 

ViTnere the office finds that the preliminary 
statement is defective, the applicant is given 
opportunit\r to amend, and in default thereof 
is restricted to his record da:,te . 

Patent Office Rule 112. 

This is prior to opening the statements for 
ihspection. After the statements arc so opened, 
amendm.ents are rarely granted e.nd can only be made 
on motion in case of m_aterial error arising through 
ina,dvertence or mistake and upon a sa.tisfactory 
showing thtat correction is sssentia-1 to the ends 
of Justice . 

Patent Office Rule 113. 

14 . Effect of Failure to File Preliminary Statement 
or to Over come prima Pa.cie Case. 



A -^ 



"If the junior partj/ to an interference, or ij 
a,ny party thereto other than the senior party, fail 
to file a. statement, or if his statement fail to 
overcome the prim^a facie case m.a.de by the respec- 
tive dates of application, such party shall be 
notified by the examiner of interferences tha>,t 
judgment upon the record vv'ill be rendered against 
him a.t the expiration of thirtjr daj/s., unless cause 
be shovfii v/hy such auction should not bo ta.ken • " 

Patent Office Rai 



Affidavits and depositions and Times for Taking 
Testimony . 

Under the law the ComiTfiissioner of patents is 
em.powered to establish rules for taking affidavits 
a,nd depositions in Patent Office Cases before 
officers authorized by law for taking depositions 
for the state and federa.l courts. 

U-3. Revised Stats. Sec 4905. 



In pursuance of such s.uthority it is provided 
by the rules that times shall he assigned for the 
ju.nior party to taVe his testimony in chief, for 
the senior party to take proofs in answer thereto, 
and for the junior party to take rebutting testi- 
mony. Such evidence is usua.lly taken pursuaiit to 
notice before a Hotejry Public in accordance v-ith 
the rules of the patent Office relating to testimony. 

Patent Office Rules 118, 154 -162. 

16 . Motion to shift ]3urden of proof . 

A motion to shift burden of proof from the junior 
party to the senior party should be made v/ithin 30 
days of the receipt a,nd approval of the preliminary 
statements. Such motion is usually upon the ground 
of the filing date of a prior application of v/hich 
the present application is a continuing application. 

17 . X;Iotion to Pissolve Interference . 

Motion to dissolve an interference should be m-ade , 
if possible, not later than the thirtieth daj/- after 
the preliminary statements have been filed and 
appr oved . 

Patent Office Rule 122 . 

Such motions are for the Law Examiner to determ.ine. 
Patent Office Rules 101, 122. 

The usual grounds for a m.otion tc dissolve are: 
a, . Informality in Declaring Iiiterf erence ♦ 

(1) A m-cre clerical error is not such an 
informality. 

Gaily V. Burton , 120 Off. Gaz . 2526. 

(2) Vague and indefinite language ma.y consti- 
tute sufficient irregularity. 

Field V. Colraan , 131 Off. Gas. 1686. 

(3) Unreasonp.ble number of counts -fcp.j consti- 
tute informality. 

Ragona v. Harris , 150 Off. Gaz . 265. 

(4) Pailujre to file proper oa,th a,n,d com.plote 
f.p p 1 i c a t i n r e s u 1 1 i n g i n ab and o nrae n t . 

Re i gge r v. Beire , 150 Off. Gas. 826. 



1 



IX 



b_. Denial of FatentaToility of Applicant's Claim . 

This ground is usually set up Toy the junior 
party in case oi newly discovered matter antici- 
pating the invention in interference. 

c. Denial of Apiolicant's right to make claim . 

(1) ?/here nev-j matter was introduced into 
a.pp lication "by ajne ndme n t . 

Tripp V. V^lf, 103 Off. Caz . 2171 

(2) V'lheTB the application was erroneous and 
misleading. 

Bla chmore v. Hall, 119 Off- Gaz . 2 525- 

(3) Ahandonm.ent of invention. 

Felsinft- v. Ne Is on , 121 Off. Gaz . 1347. 

(4) Inapplicahility of counts to applicant's 
invention- 

Earll V. Love, 140 Off. Gaz. 1209 

(5) Inoperatix-^eness of Applicant's device. 
— ' I''i' o interference in fact . 

(1) Wfiere issues limited "by prior art to precise 
construction of application and not reading 
upon device of opposing party- 

(2) V/here the terms of the issues fairly construed 
do not read upon the structures of each of 

the parties . 

Ai^peals from t he de c is ion of the Law Examine r - 

Appeals from the adverse decision of the Law Exam- 
iner upon the mierits of a party's case on a motion for 
dissolution, lie to the Examiners -in-Chief . Ko appeal 
is permitted from a decision aifirmdng the patentahil- 
ity of a claim, or the applicant's right to make the 
sa.me . Appeals, from, adverse decisions as to informal- 
ities or non-interference in fact lie direct to Commis- 
sioner . 

P atent Office Rule 124. 

Zeidler v. Leech, 1891 C -L . 9. 



IX 



8 



19 , Q.-gestiori of ITon-Patentability on final hea ring. 

"Wnere the patentalDility of a clain to an opponent 
is material to the right of a part3r to a patent, 
said party may urge the non-patentahility of the 
claim' to his opponent as a basis for the decision 
upon priority/ of invention. A psxty shall not he_ 
entitled to raise this question, however, unlens he^ 
has duly presented and prosecuted a vaotion under Rule 
122 for dissolution upon this ground or shoi;;-s good 
reason why such a motion was not presented and pros- 
ecuted. " 

Patent Office Rule 130 . 

This rule was intended to cover those cases where 
it v/as contended that one party had the right to make 
the claim, out that tlie other did not. P:/m v. Hadaway, 
139 Off. Gaz. 207 3. 

20 . Concet)tion of Invention . 

"The date of conception is the date when the idea 
of means including all the essential attrioutes of 
the invention, he comes so cleaxly defined in the 
mind of the inventor as to he capable of exterior 
expression (l Rohh. on pats- Sec. 380)." 

Me r gen thaler v. Scuddar , 1897 C.D- 724. 

The fact of conception cannot he proven hy the mere 
allegation or unsupported oral testim.ony of the inven- 
tor. There m.ust also he evidence of disclosure to 
others, or embodiment of the invention in some clearly 
perceptible form such as drawings, \7ritirigs or moaels 
or the like with sufficient proof in point of time. 
Ibid. 

Autom.atic ¥feighing T,iachine Co . v - Pneumatic Scale 
Ccrp . Ltd., 165 Ped. 288 

21. Reduction to Practice. 



a. invention reduced to practice v/hen: 

"It is essential that a device to constitute a 
reduction to practice must shov; that the work of 
the inventor must be finished physically as v/ell 
as mentally." 

Sydeman v. Tho-aa , 1909 C.I*. 310 

Reduction to practice requires the practice of 
some art, or the construction of some pi-actical 



working machine, or the production of a patent - 
a"ble composition of matter or article cf man- 
ufacture . 

RoToinson on patents , Sec. 126. 

b. A drawing or a mere nodel does not constitute 
reduction to practice. 

Automatic etc . Co . v. pneum.atic Co • 166, Fed. 
28S, 292-3. 

Mason v. Hepburn , 1898 C-I). 510. 

Sut see Curtis s v. Janin, 25^8 Fed. 4 54, 456. 

c . Three General Classes . 

Decisions involving reduction to practice may 
be divided into three general classes; 

(1) Devices so simple and of such obvious efficacy 
that the complete construction of one of a size 
and form intended for and capable of practica.l 
use, is held sufficient test v/ithout actual use 

(2) \7here a machine embodying every essential 
element of the invention has been tested and 
its practical utility demonstrated to reason- 
able satisfaction, notwithstanding the ma,chine 
is not mechanically perfect. 

(3) Where the machine is of such a character that 
the particular use for which it is intended 
must be given special consideration, and re- 
quires satisf actorj"" operation in the actual 
execution of the object. 

Long delaj- In the first and third cases in put- 
ting "toanh.ine in actual use has been regarded as a 
potent circumstance in determining whether test 
v/as successful or only an abandoio.ed experiment. 

Syde^;.ian v. T'homa , 190? C -3 . 340. 

d_. Constructive Reduction to practice 

"The filing of an allowable application is a 
constructive reduction to practice." 

Automatic Weighing Machine Co . v. pneumatic 
Scale Co ■ , 166 Fed. 288. 

22 . Reasonable Diligencfe. 



IX 10 

The doctrine of reasonalole diligence airises 
v/here , after one inventor hcis conceived his inven- 
tion, another inventor also conceives such inven- 
tion. In such case the first inventor must use 
reasonahle diligence in reducing to practice , other- 
v;ise the second invenucr, if he is prompt in reduc- 
ing to practice ahead of the first inventor, may 
beccme entitled to the patent for the invention. 

Reed v. Cutter , 1 Story 590. 

Christie v. 3e yh o Id . 55 Fed. 6S 



u • 



"If the first to conceive is quilty of la.ches in 
completing and reducing his conception to practice , 
and in the n:eantiir.e when he is not in the excercise 
of due diligence, another conceives the same inven- 
tion, then he who first reduces to practice is, in 
law, the first inventor." 

C roskev v, Atterhury , 1896 G-D. 437. 

B. APPEALS 

1. To the 3xaminers-in-Chief (Ex Parte Cases) . 

Every applicant for an original or reissue patent 
¥irhose claims have heen twice rejected on the merits, 
or who has "been twice required to divide his applica- 
tion, ma.y upon payment of the required fee appeal to 
the Examiners -in-Chief . 

Paten-G Office Rule 133. 

2. To the Commissioner (Ex Patte Cases). 

a. Matters of form . 

An appeal in the form of a petition lies to the 
Commissioner direct from the primar;,'- Exam.iner on 
any proper question which has "been twice acted 
upon ty the Examiner and does not involve the 
merits, the rejection of a claim^, or a requirem.ent 
for division. 

patent Of f i ce Rule 142. 

h . Prom; the Exam,iners -in-Chief . 

"prom, the adverse decision of the hoard of 
exam.iners in chief appeal ma^/ he taken to the 
Commhssi cner in person, upon payment of the fee 
of .|20 required by la^v." 

Patent Office Rule 135. 



IX 11 

3. Appeal o in Interference Cases (Contested Cases) 

"In interference cases pej'tics have the same 
remedy "by appea.1 to the examiners in chief and 
tO' the Commissioner as in ex parte cases." 

Patent Office R ule 1^5, 

4 . Appeal s to the Court of Appeals of the District 
of Colr.mcia . 

"]?romi uhe adverse decision of the Commiissioner 
upon the claims of a.n applicp.tion and in interference 
cases, a,n appeal may "be tahen to the Court of Appeals 
of the District of Colum."bia in the ma^nner prescribed 
"by the rules of that court." 

Paten t Office Rule 148 . 

C. BILL lU EQUITY TO OETAI]:J PATSl^T 

"WhenoTor a patent on application is refused, either 
"by the Ccmm.issi oner of Patents or "by the Supreme Court 
of the District of Cclum'bia upon appeal from the Com-" 
m^issioner, the applicant may have rem.edy by bill in equity; 
and the court having cognizance tnereof , on notice to ad- 
verse parties and other due proceedings had, may adjudge 
ths,t such a-Q-olicant is entitled, according to law, to 
receive a patent for his invention, as specified in his 
claim.., or for any loart t'nereof, as the fa,ct3 in the case 
may a.ppe ar . " 

U.S. Revised Stats . Sec. 4915. 

"T"he decision in interference X3rcceedings is not con- 
clusive on the question of priority of invention- The 
sam.e question m^y arise in subsequent suits instituted 
under Sections 4915, 4918, and 432C of the Revised Statutes," 

Automatic Weighing Xi a chine Co . v . pneumxatic Sc ale Co . , 
166 ped. 288 . 

Eut see Curtiss etc . Co . v. Janin, 278 Ped. 454. 

D. PUBLIC USE aiOCEEDII^Go CR PROTESTS. 

A public use proceeding is one v.^hich is instituted by the 
filing of a protest with the ComiTiissioner by any person pro- 
testing against the issue of a patent by rea-son of prior pub- 
lic use or sale in this country for more than two j.'ears prior 
to the application of the patent. The protestant in such case 
is a, person \'.rho has acquired hnov/ledge of the pendency of the 
applica,tion (usurally a defeated party in interference) and whc 
is interested in opposing allov/a.nce . 

In re n ational phonograph Co ■■ 89 Off. Gaz . 1669- 
"Ex Parte Van Ausdal, 91 Off. Gaz. 1617 



C0LU1.jIE.IA riSlY^RSlTY IE T}-!3 CITY OE IE?/ YORK 

COURSE 0¥. PATEITT LAW 

CO? xR I C-HT 19 £2 
D y 

Sv er e 1 1 11 . Cur t i s 



oYi;0F3IS 0? IE C TUBE X. 

A. ACqUI!?ITIOF 0? TITIE TO PATZiKT RIGHTS. 

Title to pat3r-t riglits may "oe obtained in the follow- 
ing ways : 

1. By reason of Vne inchoate right of applicant to 
patent "before issue. 

2. 3y the grant of letters patent. 
. By as s i gnrne nt . 

4 . 3y license . 



olos-aro 



5. 5y court proceedings (including incrtgage fore- 



6. ?y descent of property. 
IKCHOAriC RIGHT 111 PEHIUKG APFLICATIOll. 

■:'^)o:- the filing of an applicf-tion in the Patent 
Office, there devolves upon the inventor an inchoate 
right which he may assign or mortgage and which 
merges into full title to the patent upon issue. 
Upon request of the applicant, embodied in a recorded 
assignment, the patent will issue to the assignee . 

Patent Office RutLos 26 and 188. 

Walker en Patent? , Sec. 273 . 

In evQxy case where it is desired that the patent 
issue to an assignee , thd assignment musi: "be record- 
ed in the patent Office at a date not later than the 
day on which the final foe is paid. In the case of 
an application for a design pa.tent the assignment 
■ffjast te recorded "before the case is allowed. (See 
Rule 26) The date of the record is the date of t"ne 
receipt of t'he assignment at the office in proper 
form a,nd a,ccompanied by the full legal fee for re- 
cording. 



X 



Patent Office Rule 188, ' 
ASSIGKfflNT. 

1 . Statutory provisio n . 

"Eirer^.'- patent or any interest therein shall "be 
ass i gnat le in law by an instrument in writing, and 
the patentee or his assignee or legal representatives 
ma,y in like nin,nner grant and convey an exclusive 
right under his patent to the whole or any specified 
Pc?irt of the United States." 

U.S . Revised Stats . Sec. 4898. 

2 . Recording . 

"An assignment, grant or conveya-nce shall he 
void as against any suosequcnt purchaser or 
mortgagee for a valuable consideration, without 
notice, unless it is recorded in the patent 
Office within thi-ee months from the date thereof, 
or prior to such subsequent purchase or mortgage." 

U.S . Revised Stats . Sec. 4898. 

Patent Office Ru le 18 5. 

To be recorded, instrument must be in English 
la.nguage and affect the title to the patent. The 
patent or application should be fulljr identified. 

■ Patent Office Ru la 186. 

Except as against possible subsequent bona fide 
purchasers for value withou.t notice, recording 
is not essential tc validity of assignment or claim. 
of titiie to the patent. 

City of ITew York v . i'Vmerican Cable P.y. Co . 
60 Ped. 1016. 

5 . A c kn owl e d gmo n t . 

If assignment is acknowledged before a. notary 
public or other Qualifi.ed officer, the certifi- 
ca,te of such axknowladgment under the ha.nd and 
seal of such officer, shall be pr ima facie 
evidence of execution. 

U. S. Revised Stats . Sec 4896. 

Patent Office Pule 18 5. 



A 



\^/hat may be conveyed by assignment 



r 



c; 



Under Revised Stats. Sec. 4898, the p3,tent 
mcnopoly is cne entire thing r-ndo-.nnot "be sub- 
divided except as therein provided. Thus there 
can he conveyed by e^ssignment only the following: 

a. Tiie entire interest in the patent. 

h. An individual interest in the v.hole . 

c_. The exclusive right in a specified part of 
the United States. 

Vfet jrrna.n v . Macl-cenzio , 138 . u . 3 . 2 52 . 

Part Owne r 3 h 1 p . 

A part ov;ner of an undivided interest in a 
patent owes no duty to the other co-owners for 
an accounting for profits ma.de by the exercise 
of his individual right. Such ov/nor, withou.t 
the consent of his co-owners, may make, use and 
sell the iiivention to the fullest extent, may 
grant licenses, or -may assign his interest. 

Pg.ulus V. iruch_Kfg. Co. 129 Fed. 594. 

Blackledge v. Weir etc. rf£- Co., 108 Fed. 71. 

Assignment of undivided interests, therefore, 
should ordinarily provide for division of profits, 
a,nd unamimous consent to s.ny manufacture, sale: 
or use under the patent. 

6. Usual Rules as to Transfer of personal property . 

patents are property and within certain limi- 
tations are subject to the usiial rules of law v;ith 
reference to the transfer of personal property. 

P otter V. Hewhall , 17 Fed. 843. 

7 . Author t i c at i n . 

It is sufficient if the assignment be signed, 
by 'Ghe assignor , Neither a sea^l, nor a witness, 
nor an acknov/ledgment , nor recording, ai"c re- 
quired to give the instrument validity, except 
that recording is necessary as against subsequent 
purchasers without notice. It is customary, how- 
ever, to have the assignment acknowledged and re- 
corded to obtain the benefit of the statutory 
provisions . 

S. Date of Assi-^nmient. 



■- 'iN 



The date of an assignraent is presuriptively the 
date ?oppearing on the face thereof, unless it 
can "be shovm that the instruunaent was actually 
delivered upon some other daj', in v/hich event 
such date is effective. 

° " I '-'^W lied Vi/'a r r a n t i e s . 

V.arranty of title by the assignor is implied 
■CO the extent of the title purporting to be 
conveyed, "but there is no implied warrant of 
validity. 

?;alker on patent? , Sees. 282, 283. 

10 . Iii;g:hts of Action for past Inf r inperr-ent . 

The mere assigrxnient of a. patent does not carry 
with it the transfer of rights to sue for past 
infringements. Such rights should, therefore, if 
possible, be specifically included in every assign- 
ment of a patent made subsequent tc the date of its 
issue, or should be made tne subject of a separate 
assignment. 

T/Toor e v. ^"arsh , 7 Wa-llace 515. 

Hamilton v. Rcllins , 11 Ped. Gas. 564. 

11. ruture Inventions . 

The assignm.ent of a patent together with all future 
improvements upon the p3,tented irnrention m.ade by the 
assignor is valid and may be enforced in a court of 
equity. 

L ittlefield v. perry . 21 V/all. 205, 226. 

3\it contracts to assign future inventions, if 
not lim-ited to im.pr ovem.ents upon particular in- 
ventions or a particular class cf articles m.anu- 
factii'.red by the £„ssignee, ma^y be too brop.d and 
void as a-gainst public policy or restraint of trade. 



V/estinghcuse Air Brake Co., 



V. Chic- 



ago Brake nfF^. 



, 8 5 Fed. 786 



Hulse V. Eonsack Kach. £0., 65 Fed- 854. 

12 . Effect of sale of patent device . 

"V/hen the patented machine rightfully passes 
to the ha.nds of the purchaser from the pa.tentee, 
or from, any other person by him- authorized to 



I 



convey it, the machine is no longer within the 
limits of the monopoly." 

Chaffee v. Boston Belting; Co. , 22 Howard 217, 223. 

Bloomer v. TfcQ.uev/an , 14 Howard £39. 

But the purchaser of a patentee, machins , while hs 
may make repairs, has no right to replace or recon- 
'^truct the p£.rts of a patented corloi nation. 

Uicr gen Envelo-oe Co • , v. Albany paper Co . , 152 
U.S. 425. 

Cotton - Tie Coijoany v- Simiuons , 103 U.S. S9, 93. 
D. LICEiTSE. 

1. License Defined . 

A transfer of a patent right, short of an assign- 
mem:, under Revised Stats. Sec. 4898, is a mere 
license, giving the licensee no title in patent, and 
no right zc sue in nis own name for infringement. 

Waterman v. Tiiaclsnsie , 138 U.S. 2 52, 265. 

Exam'ple : 

Since the grant of a patent is of the exclu- 
sive righu to mjE'.ke , use a.nd sell, the trar&for 
. cf any two of these rights -vithcut the other 
would constitute a license. 

2. General Rules of Construction . 

The interpretation of a license is to be 
determxined oy the rules cf construction generally 
employed in the conEidera,tion cf contracts. 

Tvetherill v . Passaic Zinc Co . , 29 Fed - Cas . 837 . 

Thus in some cases such rights under the p-atent 
as are necessary to the enjoyment cf the thing 
granted may oe implied. 

Walker on Patent s , Sects- 29 6, 297. 

3 . Witten or Oral Licenses . 

A license is valid whether v^xitten or oral. 
Lone 3 V. Lerger , 58 Fed. 100 6. 
Cline V. Her ton, 2';'4 Fed. 723. 



4. Recordin^^ of Licences .. 

A license is not required to be recorded in 
the Patent Office to gi^e it effec-o and validity. 

Br o eke v. Byam , 4 red. Cas.2Bl. 

5- D urat ion 

"A license not expressly limited in duration 
continues until the patent expires or the license 
is forfeited, if not terT.ina,ted, tiy mutual consent." 

A merican Street Adv. C£. y. Jones , 1S2 Fed. 803,808 

6. No n-As 3 i p;nab i li t y . 

"A license to use a patented invention that does 
not contain \7ords importing assignability is a 
grant of a ■■rere personal right to the licensee 
v/hich does not p3,ss to his heirs or representatives 
and cannot "be transferred to another without the 
express consont of the licensor." 

Bowers v . Lake Superior etc . "Dredgin.';^ Co . , 149 , 
led. 983. 

7 . Licensee Estopiped irom. denying validity of patent . 

A licenses under a patent j.s estopped from de- 
nying the validity of such pa.tent in a suit for 
royalties brought by the licensor. 

Smith V. Ridgel -', 103 Fed. 87 5 

Moore V. Watl . Water Tube Boiler Co.. 84 Fed. 
546, "347. 

But in each suit, the licensee may offer 
evidence of a prior state of the art for the 
purpose of construing the claimiS of the patent. 

Andrews v. Landers , 72 Fed. 656. 

8 . License from one cf several ovmers . 

An owner in common of a patent m.ay license a 
third party to m.ake , use and sell the invention. 

Dunham, v. Indianapolis & St_- Louis INjR. C£. , 8 
Fed. Cas. 44. 

9 . License Restrictions vrithin the Anti-Trust Laws . 

Yfcere the effect of a restriction is to "sub- 



X 



stantiallj'' lessen co-nipetition cr tend to create 
a monopoly in any line of coinrrex-ce " such restric- 
tion is unlavauch'-'ander the Clayton Law v/here 
interstate coinmerce is affected. 

Clayton Law , Sec. 3. 

10 . Implied Licenses . 

Implied licenses usii.ally arise "by reason of 
conduct of the parties, and are usually the 
result of acquiescence or estopp.^1. 

\7alker on Patents , Sects. 511-313. 

11. inventions py Employee and Shop Right . 

In the ahsence of an express contract to the 
contrary, the invention of an employee is his 
own property, and he is entitled to a patent 
thereon. Under certain circumstances, however, 
the employer may acquire a license or shop 
right to use the invent idn without compensation. 

License or Shop Right . 

"YiThen one is in the employ of s.nother in a' 
certain line of work, and devises an improved 
method or instrument for doing that work, and 
uses the property of his employer and the ser- 
vices of other employees to develop "Jrid put 
into practical formi his invention, and expli- 
citly assents to the use hj.- his employer of 
such invention, a jury or a court trying the 
facts is wp.rranted in finding that he has so 
far recog?:iized the ouligations of service 
flowing from: his em.ployment, and the benefits 
resulting from his use of the property, and 
the assistance of the co-employees, of his 
employer, as to have given to such employer an 
irrevocahle license to use such invention." 

Solomon v- United States , 137, U.o.o42. 

Gill V. united States , 160 U.S. 426. 

Y/ilson V. Ai-ier. Circular Loom Co. , 137 Fed. 840 

12. Royalties . 

"Royalties are commonly understood as meaning 
soffiething proportionate to the use of a patented 
device; in other words, a kind of excise." 



f/estern Union Tel. Co. v- Am. Boll Tel. Co. 



J? - 



125 Fed. 3i2 (Rtjf erring to Bouvier's Law 
Dictionary). Eviction frcin the enjoy?r.ont of 
the patent excuses non-payi-nent of royalty. 

^nite V. Lee, 14 Fed. 791. 

Forfeiture of license does not result ipso 
facto oy the non-payment of royalties. 

Standard Dental Co. , v. ITatl . Tooth Co. , 9 5 
Fed. 291, 29 4. 

But see Russell r- Boston Card I ndex C_£-, 276 
Fed. 4. 

:OUET PROCSjIDILGo. 

jL patent or rights thereunder may be a.c quired; 

1. By judgment a.nd decree, as for example on 
suit of creditor. 

A-'rer v. I \ir r a^^ , 105 U-S. 125. 

2. By Bai'.irruptGy proceedings, 'wiiere the o^vncr 
of patent rights is adjudged a bankrupt and 
his property conveyed to his trustee in 
banlaruptcy.. 

5. By foreclosure of a mortgage or other lien 
upon the property. 

DESCENT OF ±F.O?ERTY. 

A patent or rights acquired by assignm.enx descend 
to the heirs and devi.sees of the o"wner upon his 
decease in the same r/ay as Ouher personal property- 



COLUliSIA UHIVERSITY IN THE CITY OP NEW YORK 
COURSE ON PATENT LAW 
COPYRIGHT 1922 
Everett N. Curtis 



SYNOPSIS OF lEGTURE XI 

A. DIRECT INFRINGEMENT. 

1. Infringement Defined . 

An infringement is a copy' made after and agreeing 
substantially and in principle with the article 
described and cla,iined in the letters patent. 

Haselden v. Ogden , 11 Fed. Cas . 7 68, 7 69. 

2. Infringement to "be determined by consideration 
of the claims ■ 

"Infringement is to be determined by a consid- 
eration of the claims , and if their language is 
such that, lipon a fair consideration of them, de- 
fendant's structure does not fall v;ithin their 
terms, infringement cannot be found." 

Hoe V. riehle etc . rfg . Co. . 149 Fed. 213, 214. 

S.SxamP-'les of Infringement. 

a. Of a process . 

Tilghman V . Proctor , 102 U.S. 73. 
Mowry v . \7hitney , 14 Wall . 620 . 
Cochrane v. Deener , 94 U.S. 787. 

b. Of a miichine . 

Cav/ood Patent . 94 U.S. 695. 

Andrev/s v. Long , 12 Fed. 871. 

Blanchard ■y. Reeves , 1 Fisher 103. 

Am. Diamond Rgrck Boring Co . v. Sullivan 
Fach. Co., 14 Blatch. 119. 



V- A 



2 



c_- Of a nar-uf acturo . 

Illjgaccth V- Po.Terr.ent Co., 97 tj.3. 157. 



d_. Co'-^-^'^ogitiori of !.:atter » 

Ctlev V. Watl:ins , o6 "F3d . 324. 
Lane v. Levi . 104 G.vx. 1898- 
Rich V. Liripincott , 2 Pishar 6. 

c_ . De?. ig:n Patent . 

Goraaia V. \^t3_, 14 Wail. 528. 

4. InfringeTient in-".^olYes substantial Identity . 

In order tc constitute ini ringeF.ent, sub- 
stantial identit-' of >oth raeans and result 
must be present under a fair interpretation 
of the claiiT.s of the patent. Tiiis is true 
v4iether or net the infringing device is "/ithin 
the enact letter of the clairr.s . 

West inghcus e v. Bo yde n Power Erake Co . , 170 
U- 3 . 5Z''' , 563 . 

Standard Cc^ n^^ting Sca le^ Cp . , v. C oroputing 
S.cale Co . , 12C Ped . 659, 649. 

5. Substitution of Kechanical Equivalents doas 



no- 



'010. iraxin^ercj 



■Singer TCig . Co . v. Renxv Stev/art LIf g . Co . , 
8 Fed. 920. 

\7arren Feat her bone Co., v . Ari eric a.n Peatber - 
b-^ne Co . , 15o Pel. 304 - (idilement of cool 
cloth and hot rollers held equivalent of hot 
cloth 3-nd cool rollers). 

"The range of eq.uivalents depends upon and 
varies with the degree of the iriventicn." 

Cent inental Paper Pag Co ♦ , v . Eastern Pa-per 
Bag C^ • . 210 U.S. -05, -15. 

(. lleve cho^nge of foi^'ii does not avoid infringement . 

Mere changes of form of any of the eler.ients of a 
patented device does not avoid infrmgenent ■'"'■here the 
mode of operation is the sa-/ne , ur'^css form is the 
distinguishing characteristic of the invention clafrued. 



Kirlock Tel . Co . v. Western Electric Co ♦ 
113 Fed. 6 52. 

'Jlnans v- De nre ad. , 15 Hot/. 530. 

"Forin, location and sequence of elements 
are all irmuaterial, unless form or location 
or sequence is essential to the result or 
indispensable by reason of the state of the 
art» to the novelty of tne claim." 

Adam Y. Folder, 120 Fed. 230. 

7 . O mission of "/laterial Element Avoids infringement 

of claim. 



It is :7ell settled that there is no infringe- 
ment of any one of the m.aterial elements of a 
combination claAm is om.itted, v/ithout the 
substitution of anything equivalent thereto. 

Adam V, F^ger_, 120 Fed, 280. 

Eames v. Godfrey , 68 TJ.S- 78. 

Dovragiac Mfg. Co_. v. Minnesota i/oline Flov/ 
Co., lie Fed. 136. 

8 . Addition of an elem.ent does not avoid Infringe- 
ment . 

Tilghman v . Procter , 102 U.S. VO-^, 730. 

Vfeed Cha i n Tire Grip v, Cleveland Chain & 
Mfg. £0., 196 Fed. 213. 

Forsyth v. Gar lock , 142 Fed. 461, 464. 

9 . Joinder or Seriaration of Elements does not 
evade I nf r in geme nt . 

"neither the joinder of two elemients into one 
integral part accom^plishing the purpose of both 
and no more, nor the separation of one integral 
part into tivo , together doing precisely or 
substantially what iras dene by the single elemeni 
will evade a chexge for infringement." 

Ijatlia n v- Howard , 145 Fed. 88 9, 893. 

10. A mere change of location of parts does not 
a V i d i nf r i n ge m.e nt . 

Devlin v. Paynter , 64 Fed. 398, 400. 



XI 



The raere change of the location of parts 
if SLi.ch parts still perform the saine function 
does not take the structure without the hounds 
of the patent. But if such a change is affected 
as to "break up the relation and coopera^tion of 
the parts, this results in a change in the means 
as displaces the conception of the invention, 
and takes the nev^; structure outside the patent. 

Union Steai'i Punin Co ♦ v. Battle Greek S_tean 
PuF'P Co . , 104 Ped. 337, 342-343. 

11 . patented Invention must "be Operative t o "be 
infringed. 

If the patented invention is not operative 
that is, will not do the vYork vfhich it is ex- 
pected to do, there can he no infringement, and 
the defendant is entitled to the verdict. 

3 oyer v. Coupe , 29 Fed. 358, 3S7 . 

General Slep . Co . v. Wise , 119 Fed. 926. 

12. Identity of Result is not Sufficient T(^st of 
Infringement . 

"Identity of result is, however, not a suf- 
ficient t^st of infringement. There must also 
he substantial identity of tna m.eans and manner 
of its accomplishment." 

He e kin Co . v. Baker , 138 Fed. 63. 

13. Single Sale sufficient for prima Facie Case of 

Inf r ingem^ont . 

"A single sale m-ade in circumstances which 
indicate a readiness to make other sim.ilar sales 
upon application is sufficient to make out a 
prima facie case." 

Hutter V. De Q, . Bottle Stop-oer Co- , 128 Fed. 
28o • 

14. "Eon-interchangenbility of parts tends strongly 
1 ne gat ive i nf r i ngem-e nt . 

Pitts Durg Feter Co . v . Pittshurg Supply Co . , 
109 Fed. 644. 649. 

"The specific device described in and covered 
"by the Wri^it patent could not he used in appel- 
lant's combination, nor the appellant's spring 
in the appellee's combination. This inter- 
changeability, or non-inter changeability, is an 



~^\N 



AJ- 



impcrtant test in derterriining the question of 
irif ri ngene nz . " 

irillex -r. Ba.gle Yfg. no_. , 151 U.S. 186, 208. 

15. I^'if rinf'',-errien': is not avoided "by rqason of an Im - 
perfect fjonstruc "c:. o n . 

"Iv'O nian is pex'mitted to evade a patent by 
simply ccnstructing the patented thing so iiiipei-- 
fectly that its utility is diminished." 

Cr 0^711 Co-'tc ^ S eal Cjp • , _of_ pa ltimore C ity v . 
St andard Stopper Co .", et al, ISc Fod. 199, 207 
citing ^:/alher ' on patents, Sac 376. 

1 6 . Sale nf product i . lo Infringe me nt of pr oc ess patent . 

"A patent for a ;proces8 is not infringed by 
se lling the pi" odu ct . " 

gat ional Phonograph Co . , v. Larib ert Co_. , 125 
Fed. 338 ,"35 9. 

17 . Re const runt ion and l^epair . 

A pn^r cha.sep may repair but noz re coi" struct or 
reproduce a patented device or msxhine. Repair 
is restoration after decay, injury or partial 
destru.ction. Reconstruction or reproduction 
carries vriuh. it the idea of construction over 
again, and, if of a patented machine cr device, 
or a m.aterial part thereof, may amount to in- 
f ringemient . 

Goodyear Machinery Co ♦ v. Jachs on , 112 Ped, 
14 £ , 150. 

Cotton Tie Co . v. Simmons , 106 U.S. 39. 

1 avis Sle ctrical Works v. Ed'ifeon Electric 
Light Co.. 6C Fea. 27 6, 53 Fed. S7£ . 

-'-■■ ' I-"-fringement of Design Patent . 

■'We hold, therefore, that if, in the eye of 
an ordinary observer, giving such attention 
as a purchaser usually gives tv'o designs are 
substantially the same "-■ if the resemiblanco 
is such as to deceive such observer, induc- 
ing him to pi:a' chase one supposing it to be 
the other -- the first one patented is infring- 
ed by the other." 

Go r ham v. White , 14 Wall 511. 



XI 



19 . Mere Experimental Use is not Infringement . 

"It is true that, if an infringing machine 
is made or used as an experim-ent m.erely, it 
does Tict infringe former patents. And it has 
"been held that the making of a machine as an 
experim-ent, and its exhioiticn as simply a 
m.odel or illustration, do not of them.selves 
constitute an infringement." 

?./ia chine Co . v. league , 18 Fed. 590. 

"To constitute an infringem.ent , the m.aking 
must "be with an intent to use for profit, and 
not for the mere purpose of a philosophical 
experiment . " 

Sa:-an v . Guild , Fed- Cas . 12, 391- 

Bonsack !£achine Co. v. 'Jndery/-,<od , 75 Fed. 206, 
211. 

20 . pi^rchase prior to Application for Patent . 

"Every person who purchases of the inventor 
or discoverer, or, with his knowledge and con- 
sent, constructs any newly invented or discovered 
machine, or other patentable article, prior to 
the application "by the inventor or discoverer of 
a patent , or who sells or us^s one so construc- 
ted, slall have the right to use, and vend to 
others to "be used, the specific thing so made 
or purchased, without lia"bility therefor." 

U.S . Revised Stats . 4899. 

B. CONTRISUTORY IIIFRUMGEISIIT 

1. JDef ined 

Contri'butory infringem.ent is the intentional 
aiding of one person "by another in the unlav/ful mak- 
ing or selling or using of the patented invention." 

Hows on , Contri"butorv I nf r i n ge me nt , p. 1. 

Cited in Thom.s on - Kous t on E le c . Co ♦ v. Ee 1 s e y 
Else . Ry . Sr:3cialty Co - 72 Fed. 1016. 

2. Intention and Concert of Action. 

It must appear tha.n an element of the claim 
of the patent was intentionally fTijanished, or 
the necessary concert of action v;ill "be missing. 
This may "be shorm presumptively, as where the 



I 



XI 



article supplied is incapalDle of any other use 
than an infringing, one ; otherv/iso where the 
article is adapted to other uses, the intention 
to assist in the infringement must be shown 
3.f f i r mat i ve 1 y . 

Bullock Electric & Mfg. Co. v- "/est inghouse 



Electric ^Tfr?-- Co. , 129 Eed . 105. 

Thorns on - Hous t on 51ec . Co « v. Ohio Era.?s Co . 
80 Fed . 71^:. 

"It ca,nnot be that, v/here a useful machine is 
pa.tented as a combination of parts, two or more 
can engage in its construction and sale, and 
protect themselves by showing, that though un- 
ited in an effort to loroduce the same machine, 
and sell it, and bring it into extensive use, 
each malss and sells one pari, only, v/hich is use- 
less vfithout the others, and still another per- 
son, in preeise conformity v\/ith the purpose in 
view, puts them together for use ." 

V/a llace v. Hofanes , 29 Fed. Cas . 74, 80. 
(holding a claim for a burner and chimJney, 
infringed by sale of the burner alone.) 

C. FJffiKINC- AllD NOTICE OF IKFRIKGElffillT. 

1. Statutory Provision 

"It shall be the duty of all patentees , and 
their assigns and legai representatives, and 
of all persons m.aking or vending any patented 
article for or under them-, to give sufficient 
notice to the public that the same is patented; 
either by fixing thereon the ^i'-'ord 'patented', 
together with the day and year the patent v/as 
granted; or when, from, the character of the 
article, this cannot be done, by fixing to it, 
or to the package wherein one or more of them 
is enclosed, a label containing the like 
notice; and in any suit for infringement, by 
the party failing so to miark, no damage shall 
be recovered by the plaintiff, except on 
proof that the defendent was duly notified of the 
infr ingem.ent , and continued, after such notice, 
to make, use, or vend the article so patented." 

U.S ■ Revised 3tats . 4900 . 

2. The 7/ord "Damages" Includes Profits . 

The word "damages "as used in the above 



XI 



section means all pecuniary payments vvhich 
may be recovered by a plaintiff and includes 
"both technical damages and profits, 

Franklin Brass Foundry Co . v. Sha-piro & 
Aronson , 278 Fed. 435. 

Lowe 11 Ff;;. Co » V. Hogg, 70 Fed. 737. 

Westinghouse Electric Co . v. Qondit Elec - 
tric Co ., 159 Fed. 154. 

Ccrrtra,- 

Churchv/ard International Steel Co . v. Beth - 
lehem Steel Co >, 252 Fed. 438. 

3 . Hotice v/here patented Article is not marked 
or labelled . 

■^iThere the patented article is not marked or 
labelled or where none of such article are sold, 
or where the patent is for process, notice 
should be given infringers before bringing suit, 
or dam.ages or profits cannot be recovered except 
those accruing a.fter date of suit. 

Churchward International Steel Co . v . Beth - 
lehem Cc. , 262 Fed. 438. 

Contra , - 

Camr)bell v. Mayor of City of I^ew York, 61 Fed. 

182. 

Tj . s . Mi tic Co . V. Midvale Steel Co . , 135 Fed. 

103. 

4 . "Duly notified of the infringement " 

'.'/hile the notice of inf ringemxCnt may be oral 
or ^'.Titten, the proof of such notice m.ust be 
clear and definite, and it should appear not 
only that the defendent 'vvas notified as tc the 
existence cf ownership of the pa.tent but also 
that defendant's acts were claimed to be an 
i P-f r i ngeme nt . 

IT. Y. Fbarmiical Association v. Tilden 14 
Fed. 740. 

Westinghcuse Electric & ICfg - Co . , v. Ccndit 
E lectric Mf;: -Co. , 159 Fed. 154, 

Franklin Brass Foundry Co . v. Shapiro & 
Aronson, 278 Fed. 435. 



XI 



The Bringing of a "'Dill of coinplaint for 
ir-frmcer-ient and service -jpon the defjndani 



v-,+ 



is r.oi: a su.il zicient- nouice oi ini rmgenent . 
Franklin Brass 'Foundry Co. v. Shapiro 



cO. . 



i Arons on , ii.75 ?ed 

Contra ; - 

v.^stgnprnouse Elec . « l;"f g . Go - v. Condit_ 
X.' le c . I'l ~ . Co. , 159 ]?ed, 154. 

Under"/ 00 d T'"'P'^'''^riter Co . "• Elliot - ?ischor 
Co., 171 Fed. 116. 



/ 



CCLUI'SIA UEI^TERSITY IN THE CITY OF MOW YORK 

COURSE ON TATE NT LA.W 

COPYRIGI-IT- 1922 

Everett LT. Curtis 



SYITOPSIS OF lECTURE XII 

A. JURISDICTION OF COURTS IN PATENT , CAUSES . 
i. United States District Cout't . 
a. Statutory provisicns. 



The U. . S. District Court has original 
jurisdiction, among other matters, of all suits 
at law or in equity arising under the patent 
laivs . In suits brought for infringement of 
patent, such courts have jurisdiction in the 
district of which the defendant is an inhahitant , 
or in any district, in which the defendant sha.ll 
have coiTcnitted acts of infringement and have a 
regular and established place of business. 

■Judicial Code , Sects. 24, 48 

"These restrictions on jurisdiction are, 
however, merely a personal privilege and are 
v/aived 'oj a personal appearance." 

Wa?-ker on Patents , Sec . 389 . 

Arising uiider the pa.te nt Laws . 

All cases involving the determination of in- 
fringement of a patent arise under the patent 
laws, but a suit brought to try a question of 
title cr to enforce or annul a contract of which 
a patent is the subject matter is upon such title 
cr contract, and is not under the patent laws. 

Dale Tile yf g . Co . v. Hyatt , 125 U.S. 46. 

■ Wade V. Lav/der , 165 U.S. 624. 

Victor Talking Machine Co ■ v. The Fair , 125 
Fed. 424. 425. 



XII 



c_. Reg-.ilar and Eg talolished Place of Business . 

Under the statute, the infringer in a district 
of which he is not an inhabitant , must he shov/n 
to have infringed therein and to have a"regular 
and established place of husiness" within such 
district, and it is rot s\ifiicient to snow a 
mere solicitation of orders or the maintenance 
of sale agencies within the district v/here the 
orders are filled and the goods shipped direct 
to the customer from v;i thou t such district. 

Ge neral Electric Go . v. Best Electric Go » 
220 Fed. 347 . 

W. S^ Tyler Co . v. Ludlow Saylor Wire Co. 
236 U. S. 723. 

2. Jurisdiction of the Eederal Courts is Exclusive 
of State Courts . 

a- Statutory Provision 

The jurisdiction vested in the ecurts of the 
United States as to all cases arisihg under the 
patent lav/s is exclusive of the courts of the 
several states ^ 

■Judicial Code , Sec. 256. 

Coujrts of a state, however, m-ay try questions 
of title, and may construe and enforce contracts 
relating to patents, such causes not arising under 
the patent lav/s. 

I!il£ ^Tew Marshall Engine Co . & Marshall v. The_ 
Marshall Engine Co., 223 U.S. 473. 

3. Juris diction of U. S. Circuit Court of Appeals in 
P atent Causes . 

a. Statutory Provisions » 

The U. S. Circuit Courts of Appeal excercise 
appellate jurisdiction t-a review hy appeal or 
writ of errors all f i ral decisions in patent causes, 
and allinterlocutory orders or decrees granting, 
continuing, refusing, dissolving, or refusing to 
dissolve an injunction against inf r inger.ent . 

Judicial Code , Sects. 128, 129. 

h. Certification to Supreme Court. 



In any case within its appellate jurisdiction 
the U. 3- Circuit Court of Appeals maj/- certify 
to the Supreme Court of the United States any 
questions or propositions of law concerning 
which it desires the -instruction of that court 
for its proper decision, 

. Tu-dicial Code , sec 239. 

4. Certiorari d^' Supreme Court 

Upon the petition of the party who is or who 
may he aggrieved ty the final decision jiSf any 
U. S. Circuit Court of Appeals ih a patent cause , 
it is competent for the Supreme Court to require 
by certiorari siich cause to be certified to it 
by such Circuit Court of Appeals for its review 
and determination. 

Judicial Code , Sec. 240. 

The usual grounds of such petitions are that 
there is a conflict of decision between tvTO U -S. 
Circuit Courts of Appeal, or tnat a question 
of gravity and importance is involved or to cor- 
rect ejscesses of jurisdiction and in furtlierajrose 
of justice. 

Eorsyth v. Hammond , 165 U. S- 514. 

Re Lau Ow Bew. 141 U. 3. 583. 

In -Re_ Chetwood , 16 5 U. 3- 44 3. 

5. Recovery of Damages for Inf ringemient in an Action 
at Lav/ . 

"Damages for the ini" ringement of any patent 
may be recovered by action on the case, in the 
name of the party interested either a.s patentee 
assignee , or grantee . And whenever in any such 
action a verdict is rendered for the plaintiff, 
the court m.ay enter judgment thereon for any sum 
above the amount found ''oy the verdict as the actual 
damages sustained, according to the circumstances 
of the case, not exceeding tiiree times the amount 
of such verdict , together with the costs." 

U. S. RRy.i.ged. Stats_._ Sec . 4919 . 

Uote tha.t the words "patentee, assignee, or 
grantee" above referred zc mean the owner of 
the pateiit at the time the infringement took place. 

Moore v. Marsh, 7 V/all 515, 



6- Cbtaining of .Lni unction, It of its, and Saraages in 
Acticn of Equity. 

The U. S. District Courts have power of courts 
of equity to granc injunctions to prevent infringe- 
ment of a patent on sucli terms as r.ay be deemed 
reasonable, and upon a decree for infringement the 
plaintiff is entitled to recover either profits or 
damages. In the case of damages, the court has the 
power as in a larr case to enter judgment for any 
amount not exceeding three times the amount of 
actual damages sustained. 

U. S - Revised 3 tats - Sec. 4921. 

7 . Jui'ies in Patent nases . 

a. At Law . 

In a,n action on the case, which is a suit at 
common law, a jury trial of twelve men is con- 
ferred by the Seventh Am.endment to the Fed- 
eral Constitution. Such right may, hov/ever, 
be v/aived by the parties. 

b. In EquiLy . 

A court of equity has the power to impanel a 
jury of not less than five and not more than 
twelve persons and to submit to them such 
questions as may be deemed expedient, but the 
verdict of such jury may be treated with the 
sa.me effect a,s in the case of issues sent 
from chancery to a court of lav/. 

U.S . Stats . -at Large 316. 

Such verdict may., therefore, be disregarded 



8 . Jurisdiction in Case of interfering Patents . 

■Where there are interfering patents, any person 
interested in ore of the patents may bring a suit 
in equity against the interfering patentee and par- 
ties in his interest., and upon due pro^ieedings had 
the court may declare either patent voiO- in whole 
or in part or inoperative or invalid according to 
the interest of the parties j.nvclved. 

US Revised Stats. Sec- 4318. 



9, Jurisdic 



v^c oc,:) 



Suit ney be brought b;' the oi/^/ner of a design 



XII 



patent for inf ringoment thereof in any Bistrict 
Court of tho United States having Jurisdiction 
of the parties, either oy action at law or upon 
a bill in equity to restrain such infringement. 

24 U.S. Stat, at Large 337. 
10. S uits for Infringement against the United States . 

Whenever a patented invention is used ty the 
united States v\/'ithout license of the o\7ner or law- 
ful right to use the same, such o\mcv may recover 
reasonable compensation for such use in the Couxt 
of Claims, provided that the united States may 
avail itself of all the defenses v/hich might "be 
pleaded ty an ordinary defendant, and provided no 
patentee or assignee may sue Vv'hile such patentee 
is in Government Service or employ; nor snail any 
suit Toe "brought regarding any device invented by 
such employee T/hile so emp?uo;/ed. 

56 U.S . Stat . at Large 8 51. 

B. PLAIliTI'i'FS IN ACTIOIJS YOR IlG'RINCSl.ffiM'. 

The plaintiffs in an action for infringement m.ay be , - 

1- The Patentee 

That is the person tc whom the patent was 
originally issued. 

2. Assignee or Grantee . 

An assignee of the entire interest, or the grantee 
cf a particular part of the United States under a 
patent miay sue in his o\rn name. 

Moore v. Far_Gh, 74 U.S. 515- 

YiThere the assignment is made after an equity suit 
has been brought upon the patent, the assignee should 
be substituted for the plaintiff and a supplemental 
bill filed in his behalf. 

George W. J ac>s on v. P ries tedt Co . , 159 Ped. 496. 

3 . Owners in Comino n. 

All the owners in common of a patent m.u.st join 
as plaintiffs in a suit for infringement thereon. 
A part owiier cannot sue a,lone . 

'\Tz,n Orden v. ICavor of Pashville , 67 ped. 331. 



XII 6 

4. Adninistrat cr or Executor . 

"A patentee's right fcr infringement survives 
to his personal re-presentatives , and it is v/oll 
settled that his execator or administrator maj 
not only sue on such cause of action, out :Tiay 
assign and tra.nsfer the same to another." 

I"iS.y V. County of Logan, 30 5"ed. 2 50, 253. 

5. Licensee . 

A licensee, as such, cannot su:, for infringement. 

Paper Eag Cases. 105 U.S. "6c, 771. 

An exclusive licensee rcsij, hov/ever , "bring suit 
for infringement upon the pa,tent in the name of 
the c"i7ner , and even against his dissent. 

Goodyear v. Bishop, 10 ^ed. Cas . 642. 

6. Receivers . 

The powers of a receiver are those conferred 
upon him Toy the court and he ordinarily/ acquires 
no title to the property placed in his custod:/- 
Unless therefore a tra-nsfer of the patent to the 
receiver is compelled 'bj the court, he has no right 
to sue for its infringement. 

Ball V. Coher , 168 Jed. 304. 

7 . Trustee 

A tiJnstec holding the leg.al title to a x^atent 
m.ay sue for infringement thereon. 

S . Suit on a plurality of patents . 

It hs,s long Doen the rule that v;here several 
patents are capaole of conjoint use and have been 
so used oy the def endai.t , one suit may he brought 
for such infringement- Also under Sev; Equity Rule 
26, the plaintiff may now :; cin in one suit in 
equity as ms.ny equitacle causes of action &,s he 
has against the defendant, x:'r o'^-ided that the 
court ma.y order sepa,rate trials if otherv/ise 
inconvenience v/ould results 

C. EE5EEDA:IT II? .iCTIOi^S POR lEERIEGSl^lET. 

1- I'jo.tural persons and DartnershiTJs . 

l:atural persons and persons composing a part- 
ner shir; mav "be sued for infringement. 



XII 



2. Private Corporations and Officers thereof . 

Corporations are lialDle foi- infringements 
consnitted through their officers or ei-nployes , 
Out such officers or employes are not them- 
selves ordinarily so lis.lDle. 

^."alker on Patents , Sect, 410. 

3. Puolic Corporations . 

A State cannot he sued for infringement, 
except hy its ov/n consent. 

nans v. Louisiana- , 154 U.S. t. 

Municipality' may "be sued. 

Bliss V. Brooklyn , 3 Fed. Cas . 706. 

County may "be sued. 

May V. ':'ounty of ?'x-rcer , 30 Ped. 246. 

Contra, - 

J aGO"'os V- Hs.miltcn Cor-nty , 15 Ped . 276. 

4. Admiinistrative Officers . 

Administrative Officers, such as executors, 
administrators, trustees, receivers, trustees in 
"bs.nicruptcy, and assignees for henefit of creditors 
may_ he sued. 

Walker en Patents , Sect. 401. 
FJEPEAL OP PATSI^TT BY UKITED STA'IES. 

"Where a patent for a grant of any kind issued hy 
the United States has heen obtained by fraud, by m-is- 
tako or accident, a suit by the United States against 
the patentee is the proper remedy for relief." 

U nited States v. Amc r . Bell Telephone Co . , 159, 
U.S. 548, 5Ki". 

United States v. Amer . Bell T ele -phone Co- , 128, 
U . b , 315. 



COLUI.©IA UiaVSRSITY IN TEE CITY OP K317 YORZ: 
COURSE Ol'j PATENT LAW ■ 
COPYRIGHT 1922 
Everett IT. Curtis 



SYl'TOPSIS OP lECTUPi] XIII 



A. ACTIONS AT LA\7 

1 . Statutory Provisions 

"Daiiiages for the inf ringerient of any patent 
■inay "be recovered Toy action on the case." 

U.S . Revised Stats . Sec- 4919 , 

The practice, pleadings, and forms and modes 
of proceeding in civil causes, other than equity 
and admiralty causes, shall conform as near as 
may be, to those of the state where the federa,l 
court is held. 

U.S . Revised Strts . Sec. 914. 

Both these sections are to he construed together, 
to the end the forms of pleadings and procedure 
in an action on the case should "be the same as 
those Employed in the same action in the state 
courts- Hhe archaic formes and procedure of the 
common law should not he f ollov/ed, unless the 
State practice so required. 

Celluloid Vf.z . Co . v. American Zylonite Cc, 
34 Fed. 745. 

2. Tr iall hy Jury. 

a. Unless v;aived hy the pexties, trial must be 
by jury. 

U.S . Go r-stitution , 7th iimendment . 

U .S. Revised Stats « 3e c . 566 - 

By ;7aiver of parties judge may try the case. 

U-S- Revised Stats. Sec 649, 



Ey agreeiTient of parties, jury ray be vjaiyed 
and case referred by the court, to a. referee. 

Heckers v. Fcv/l^r , 2 Wall. 123. 

b. By trial "by jiuy in the federal courts is 
rrieant a .jury c opposed, as at coiffinon law, 
of t^relve men. 

Ilaxwell V. Dow, 17 6 U.S. 581, 586. 

c. It is the duty of the judge, to preside at 
the tria.l, and to instruct the jury as to 
the law. Thus he may in hi.3 charge construe 
the claims -of the patent and define the scope 
of the invention. 

]\aarsh v. Q.uick - F.ea l Stove Co. , 51 Fed. 203. 

Ho Ime s V. Tru:-nan , 67 Fed. 542. 

d. It is the province of the jury to decide all 
issues of fact. Thus the question of infringe- 
ment should ordinarily be submitted to the jury 
with proper instructions by the court as to 

the nature and scope of the patent. 

Coupe V. Royer , 155 U.S. 565, 581-582. 

e . Ijirection of Verdict for "Defendant . 

"V/iiere it is entirely clear that the plain- 
tiff cannot recover, it is proper to give such 
a direction but not otherwise." 

Klein v. Russell , 19 Wall. 431, 453. 

"If, upon the state of the art as shoivn 
to exist by the prior patents , and upon a 
comparison of the older devices virith those de- 
scribed in the patent in suit, it should s^ppear 
that the patented clairiis are not novel, it be- 
cOixes the duty of the court so t.o instruct t.he 
3 u-ry - " 

Market Street Railivay Co ., v. Rowley;, 155 U-5. 
621, 625. 

3. plaintiff's Pleading. 



The plainti'ff's pleading follows the law of the 
state where the disti-ict court is held, a.nd is 
usuallj;- termed a declaration or complaint. The 
essential allegations in the District Court of 



XIII 



the United States for any of the Districts of 
New York are as follo'vvs: (Under xicvr Yorlc 
Civil practice Act, Sec. 2 55.) 

a. The name or tirle of the U- S- District' Court 
Vv'here the action is "brought. 

b. The names of all the psjrties to the action, 
plaintiff and defendant, in their personal, 
corporate or representative capacities, and 
facts showing defendant is inhabitant of the 
district or has committed acts of infringe- 
ment and has a regular and established pla.ce 
of business therein. 



tuting the cause of action substantia-lly as 
f ollo?/s : 

(1) lTan:e , residence and citizenship of the 
inventor and rjatentee. 

(2) ijovelty, utility, etc., as set forth in 
Rev. Stat. 4885. 

(Exact language of statute should be 
follov;ed) 

(3) Granting of letters patent on a.pplication 
of inventor. 

(4) profert or setting forth of letters pe^tent. 

(5) Issua-nces, signing and sealing of letters 
patent in compliance with Rev. Stats. 4883. 

(Exact language of statute should be 
followed. ) 

(6) Term and scope of patent in compliance 
v/ith Rev- Stat. 4884. 

(Exact language of statue should be 
follov\red.) 

( 7 ) Re i s s ue or D i s c la imer . 

(8) Title. - Best practice is to set forth all 
mesne assignm.ents by legal effect. Profert 
is not necessary except of letters testamen- 
tary or letters of administration. 

(9) Marking or actual notice of infringement. 

(See Rev- Stats. 4900.) 

(lO) Statement of infringement by defendant. 
ITote: Continuando should be set forth. 



XIII 



Lc Page Co • y. Russian Cement Co « , 51 
Ped. 941, 949. 

(11) Special damages, including allegations of 
additional damage not exceeding trelDle 
da,ma::xeD as set forth in Rev. Stats. Sec. 
4919T 

d. Demand of the judgment'; to which plaintiff is 
entitled. 

ijote : Joinder of Causes of Action . Under the 

IJew Yorir practice , an action for the comhined 
infringement of several patents may "be brought 
Vifhere the in-rentions of such patents are cap- 
able of conjoint use in the infringing Article 
or vyhero the infringements arise out of the 
sa,mo transe.ction. 

I\fe¥7 Yor k Civil Practice Act , Sec- 2 58 . 

Gontinuando . Continuous injury should "be 
alleged. If only one date is mentiSined or 
if the time he left indefinite., the defendant 
is correspondingly restricted. Infringement 
therefore should he stated to have occurred 
on a certs.in day a.nd on divers other da37-s 
after that day and prior to the date of the 
suit . 

Le Page Co . v. Ru.ssian Cement Co • , 51 pod. 
941, 949. 

4 . Defendant's Pleading 

a. Motion for Judgment on the follo?/ing grounds : 

1. That the Court has not jurisdiction of 
the person of the defendant. 

2. That the court has not j ■'or is diction of 
the subject of the action. 

3. Ths:t the plaintiff has not legal capacity 
to sue . 

4. That there is another action pending he- 
tv/een the sam_e pcxrties, for the same cs.use, 

5- That there is a m.isjoinder of parties 
plaintiff. 

6. That there is a defect of parties, plain- 



XIII 



7 . That causes of actioii have been improp- 
erly united . 

8. That the complaint does not state facts 

sufficient to constitute a cause of action. 

Eew York Civil Practice Act . „Sec . 277 . 

'K-pte : An ohjection on any of the grounds 
a"bo\''e set forth, except 8^ appearing 
on the face of the Complaint, is 
waived unless taken by motion. 

Uew York Civil Practice Act ., Sec 27 9. 

b. Ansv/er . 

The defenses v/hich may be raised to an action 
for inf ringem-ent are quite numerous (For full 
enumeration see Walke r on Patents ,, Sec 440.) 
Among the more usual may be mentioned the 
f ollov;ing; 

(1) Bo patentable subject matter. 

(2) ITo invention. 

(3) Lack of novelty. 

(4) Eo utility or inopera.tiveness . 
(5; Abg.ndcnment . 

(6) Want of title 

(7) ITo m-arking^r notice of infringement. 

(8) Estoppel 

(9) LTo infringement 

Of these the defenses of want of invention, 
lack of novelty, a.nd no infringement consti- 
tute the main defenses upon which the great 
majority of cases are tiied, 

c . General Denial & General Issue . 

Under the New York Code, the defendant's 
answer may be a general denial, in which 
ca.se the plaintiff is put to the proof of 
all his essential allegations. Since plead- 
ing a general denial is the only way under 
such Code, the general issue may be pleaded, 



XIII 



the defendant raaking such, denial may on 
notice prove on trial any one or more of 
the following special ma.tters : 

First : That iQiT the puarpose of deceiving the 
public the description and specifica- 
tion filed "by the patentee in the Ps.tent Office 
\7as made to contain less than the whole truth 
relative to his invention or discovery, or 
more than is necessaxy to produce the desired 
effect; or. 

Second. That he had siirreptitiously or unjustly 

ODtained the patent fox- that which was 
in fa.ct invented "by another, who was using rea^s- 
ona"ble diligence in adapting and perfecting the 
same ; or 

Thir d ♦ That it has "been patented or desc ri"bed 

in some printed pu"blicaticn prior to his 
supposed invention or discovery thereof, or 
more than tvv'-o years prior to his application 
for a patent therefor; or, 

Eourth. That he was not the original and first 
irventor or discoverer of any miatcrial 
and su"bstantial pert of the thing patented; or, 

Fifth . That it had been in pu"blic use or on 

sale in t"his country for m-ore than two 
years before his application for a patent, or 
ha.d been abandoned to the public- 

U.S . Revised Stats . Sec 4920. 

5. ?ffotion for Judgment on Defendant's Answer . 

The plaintiff may move for judgment on defendant's 
answer on the ground that the defense set forth ia 
insufficient in law upon the face thereof. 

Ifew York Civil practice Act . Sec 277. 

6« Rules of Evidence . 

"Hhe rules of evidence which exe used in 
the trial of patent causes are the ordinary 
rules of the common law, as m.odified by the 
statutes of the particular States in which 
such trials occux, and as adapted to the 
circumstances of patent litigation by the 
decisions of the "United States courts." 

V/alker on Patents , Sec. 490. 



-\^ 



XIII 



7. Plaintiff's Proofs (prima Facie) 

a. Proof of incorpcraticn or rcpr'^sontative 
character of plaintiff if suing otherwise 
than in nis persona]- capacity. 

b. Proof of letters patent in suit. 

c. Proof of chain of title to plaintiff, 

d. proof of Defendant's Inf ringement including 
expert evidence as to simila.r ities and 
identity of deyices of plaintiff and defen- 
dant . 

e . Samages • 

"At lav the plaintiff is entitled to 
recover as daraages, conapensaticn for the 
pe-cuniary losti he has suffered frqn the 
i nf r i nge me n t . " 

G oupe V. Rover ., 155 U.S. 555, 582. 

I'^athods of Assessing Painages are : 

(1) Using plaintiff's established royalties 
as a o3,s IS • 

(2) What the plaintiff ■'^/ould have gained 
if not interfered Avith- 

(o) Reasonahle royalty. 

Walker on Patents , Sec. 555. 

IJote that in a flagrant case,, the trial 
judge may enter judgment on the verdict for 
any sum above the amount found by the jury 
not exceeding treble such amount. 

U.S. Revised Stats . Sec 4919. 

8 . Defendant's Proofs . 

The proofs offered by the defendant axe 
either those which directly contradict the 
plaintiff's proofs, or are in confession 
and avoidance thereof. 

9. Plaintiff's Rebuttal . 

plaintiff's rebuttal proofs are directed 
to meet novr matter which may ha.ve been brought 
out by de:genda,nt. 



I 



» 



XIII 8 

10. Q;j i Tan Actions . 

These are statutory actions "br ou5:ht to rc- 
GOTcr a penalty of one hundred dollars , one half 
of v/hich when recovered goes to the plaintiff 
and one half to the United States. The classes 
of forbidden e^cts for v/hJ.ch such penalty is 
imposed are as follows : 

(1) Marking name of patentee or imitation 
thereof upon patented article without 
his consent. 

(2) li'Tarking upon patented article word "patent" 
or "patentee" or "letters patent'' or the like 
without patentee's consent, vvith intent to 
imitate or counterfeit the mark or de-fice of 
the patentee . 

(3] Marking unpatented article with word 
"patent" or any v/ord iinportaing same is 
patented for purpose of deceiving the pulDlic 

U.S . Revise d Stats . Sec. 4901. 

Note that any person may sue for the penalty 
for each offense in axiy district court of the 
United States within whose jurisdiction such of- 
fense may have "been committed. 

Ibid 



CCLUIiT&IA TOTIVER3ITY 11^ THE CITY OF 'MW YCHK 

COURSE CIT PATENT LAW 

COPYRIGHT 1922 

Everett N. Curtis 



SYITGPSIS OF lECTUPS XIV 



A. ACTION IIJ EQ,UITY 

1. Jii.r isiiction of Federal Courts in Equity . 

The Geverai federal courts vested v/ith jurisdic- 
tiori of case? arising under the patent la.vi's have 
poyer to grant injunctions according to the principles 
of courts of e equity; ai:d upon a decree for infringe - 
ment, the plaintiff is entitled to recover profits 
or d arcage s . 

U . 3 . Revised S tats ■ Sec- 4921. 

As to history of iurisdiction of the federal 
courts ,, see , - 

Franhlin Brass Foundry Co . v . Sha-Qiro & Ar ons o n , 
27 8 Fed. 43 5, 438. 

2. Six Year Linitation . 

No profits or damages can he i-ecovered for any 
infringement committed more than six years hefore 
the filing of the "bill o^f complaint. 

U.S. Revised Stats . Sec 4921. 

This statutory limitation applies to "both actions 
at lav; and equity. 

3. l i-ofits or Pam.ages 

a. Both 3/n accot-nt of defendant's profits may be 
ta.ken and plaintiff's damages assessed in an 
action in equity. The court will thereupon enter 
a decree for the larger amount of recovery, 
whether da.m.ages or profits. 

Walker on Pa, tents. Sec- 573. 



XIV 



Id. a 'ojrll for equity, howeYjr , will not lie merely 

for the recovery of profits or damages arising 
ouL of defendant's infringement; such relief is 
incidental to the right of injunction or other 
equitaole ground of action. 

Hpct V. Railv/ay Co. . 105 U.S. 189, 215-$16. 
Bill in Zouit" 

A till in equity for infringement of a patent 
ohou id CO nt ai n ; 

a. Title of the court and name of the case. 

h. The full name, virhen know;., of each plaintiff 

and defendant, and the citizenship and residence 

of each party, together vjlzh. the disability, if 

any, cf either party. 

c. A short and plain statement of the grounds upon 
Y/hich the court's jurisdiction depends, including 
facts showing defendant is inhabitant of district, 
or has cornmitted e.c'cs cf infringement and has a 
regular and estc.hlished place of "business therein. 

d. Short a.nd simple statement of the ultimate facts 
upon Yvfhich the plaintiff asks relief. 

ITote : This statem.ent is the same in substance as 

that cf a com^plaint in an action at law, ex- 
cept as to matters laying foundation for in- 
- junction or other equitable relief, such as 
irreparable injury and threatened future 
infringement . 

e. If there are proper parties defenda^nts who 
are not named as defendanos, the bill should 
state why they have not been made parties. 

f . I'TP-yoT for relief. 

g. Signature of solicitor. 

h. Oath of plaintiff or of some one having kno^vledge 
of the facts where special relief is desired 
pe nd i ng t he su i t . 

Federa l Equity Rules , 24, 25. 

Parties Plaintiff and Defendant . 

In general, the parties plaintiff and defendant 
are the same as in actions at law, except that the 
owner of an equitable title should ordinarily 
be ioincd with the owner of the legal title. 



Stimson v- Rogers , 23 Ped. Cas . 105. 

S. Deferises . 

a. Iviotion to Dismiss . 

Every defense in point of law arising on 
the face of the bill, ^ay he made hy motion to 
dismiss- Demurrers sAid. pleas in equity ca-uses 
are abolished . 

h. Answer . 

( 1 ) Defenses in Answer . 

The answer maj'- soo forth as a ground of 
defense any matter which night ha "ve "been 
made the subject of a mtotion to dismiss. Also 
all defenses formerly presentable by plea in 
bar or abatement, or by answer. 

Federal E q u.i t y Rules , 29 ,30 . 

(2) Gr ounds o f De f e ns e . 

The same grpounds of defense may be sot 
f"orth in the defendant's answer as in actions 
at law. In addition there may be raised in- 
equity two other grounds, laches and Avant of 
equit -b'le- jurisdiction. 

(3) Contents of Answer. 



"-he defendant in his answer s ha,ll in short 
and sim-ple term.s set out his defense to each 
claim asserted by the bill, omitting any more 
stc:,tem.ent of evidence and avoiding any general 
denial of the averments of the bill, but specifi- 
cally admhtting or denying or explaining the 
facts upon which the plaintiff relies j unless the 
defendant is without knowledge, in which case ha 
sha,ll 30 state, such statemiont operating as a 
de nial . " 

Eederal Equity Rule 30. 

"The s^nswer m^s-y state as many defenses, in 
the alternative, regardless ci consistency, as 
the defendant deems essential to his defense.'' 

Ibid 

(4) g ornter - Claim:. 

The answer miay state in short and sim^ple 



i 



XIV 



form any c ounter-cla.im arising out of the suTd- 
ject-matter of the suit,, or any set-off or 
counterclaim against the plaintiff vvhich might 
loG the su"b)ject of an independent suit in equity 
against him. 

Federal Equity Rule 30 .- 

7, Plaintiff's Reply . 

The plaintiff in case of a set-off or counter- 
claim, shall reply within ten days after filing of 
the answer , unless such time is extended by the 
court. Otherwise a reply shall not be required 
without special order of the court. 

Federal Equity Rule 31 . 

8. Defense of V/ant of Equitable .Jurisdiction . 

A vmnt of equitable jurisdiction is fatal to 
the suit. If it appears on the face of the bill 
it may be raised by m-otion to dismiss, or in any 
event in the answer whether apparent in the bill 
or not. It is usually invoked where the patent in 
suit expired before the bill was filed, or where 
no ground for equitable relief is set forth. 

Root Y. Railway Co. . 105 U.S. 189, 

Campbe 11 v. Ward_, 12 Fed . 150. 

. Defense of Laches . 

Cases involving defense of laches "proceed on 
the assumption that the party to whom laches is 
impu.tsd has Iznoxvledge of his rights , and an ample 
opportunity to establish them in the proper forujn; 
tha.t by reason of his delay the adverse party has 
good reason to believe that the alleged rights are 
•worthless or have been abandoned; a.nd that because 
of the cha.nge in condition or relations during this 
poricd of delay, it would be an injustice to the 
lattei- to permit him now to assert them." 

C-alliher v. Cadv;e 11 , 145 U.S. 368, 372. 

Ford T^otor Co . , v. K.W. Ignition Co . , 278 Fed. 
57 3. 

Mere laches, unaccompanied by circumstances 
amounting to an equitable estoppel, vdiile they may 
preclude recovery of profits or damages, willnot 
shut out a party from relief by injunction on final 
hearing in a clear case of infringement. 



o 



i 



Taylor V- Sowyer Spindle Go ., 75 Fed. 301, 303. 

Mencndcz y. Holt , 128 U.S. 514. 

McLean v. Fleirang , 96 U-S. 245. 

Be ax. tie Mfg. Co., v. Smith, 275 Fed, 164, 172 



10 



Seven ^rea-rs held fatal, v/here plaintiff laiew 
of defendant's extensive ssile, and enla„rgenient of 
invostraent and said nothing, particularly ■'.vhere 
infringement was not clear. 

General B lee trie Co ., v. Yost Blec . Co . , 208, 
Fed. 719 .. 

Twelve years held fatal where employee had per- 
mitted employer to use invention without protest. 

Lane & Bodley C_o. v. Lock e , 3150 U.S. 193. 

Bill of par tic ul -x s . 



"A further and "better statement of the nature 
of the claim or defense, or further and better 
particulars of any m-a.tter stated in any pleading, 
may in am;- case oe ordered, upon such terms, as 
to costs and otherwise, as may he just." 

Federal Ecuit" Rule 20 . 

The purpose of this rule is tO) eAO. a litigant 
to ascerta.in the case he is to m_eet , to avoid 
surprise at the trial, and to make the issues 
more definite. 

wlii taker v. Y/hi taker iron Co. , 238 Fed. 980, 
982. 

Thus date of invention may he required to he 
specified hy plaintiff, ?„nd defendant simultaneous- 
ly-required to divulge dates of prior uses and. 



Di ck Co . , V . Underwood TypeY^ir iter Co., 235 Fe d . 
300 . 

11. Interrogator ies 

The xTev/ Equity Rules have aholished the inter- 
rogatory part of the hill, and provision has heen 
made under Equity Rule 58 hy the nevr practice of 
filing of interrogatories hy either of the parties 
to he answered under oath hy the other. The sa.me 



ZIV 



-rule makes provision for the enforcement of answers 
to interrogatories or the inspection or production 
of docum.ents in possession of the party interro- 
gated. The interrogatories are expressly limited 
to facts in support of the case of the party inter- 
rogating. 

l2 . Hearings . 

"The hearing of 8.n action in equity for infringe- 
ment of a patent, may take place before one of the 
judges of the court sitting alone, or "before sev- 
eral judges sitting together, or before a judge and 
a, jury, or before a m-aster in chancery." 



Walker on Patents , Sec. 632. 
13 . 'Tr i als in Ope n C ou rt . 



Under the new equity rules, the testimony in 
patent causes is taken orally in open court, ex- 
cept as otherwise permatted by statute or order of 
the court . 

Federal Equity Rule 46. 

Depositions may be taken by statute, as where the 
witnesses reside over 100 miles fromi the place of 
trial, or may be taken on order of the court for 
good and exceptional cause . 

Federal E quity Rule 47 . 

Master in Cha.ncery . 

"Save in matters of account, a reference to a 
mia,ster shall be the exception, not the rule, and 
shall be m.ade only upon a shoviring th3.t some 
exceptional condition requires it. 



Federal Equity Rule 59 . 



Expe: 



;i tnesses 



Usus.lly the evidence of expert, witnesses is 
taken in open court, but upon petition the District 
Court may order that the testimony in chief of 
such v/i tnesses' m.a.y be set forth in affidavits, the 
opposing party having the right on m-otion to 
cross-exam.ine . 



Federal E qu i t y Rtrle 48 . 



AIM 



In the U. S- District Court of the Southern Dis-^ 
trict of Nev/ York only one expert witness s is allowed 
to each side, except hy leave of court. 

Local E quity Rule 5 . 

E. PPELIMIKATIY INJUKCTIOES AllD IZill^RLOCUTORY DECREES- 

1 . Interlocutory Decree . 

An interlocutory order or decree is. one vvhi ch 
is not final. Thus a decree sustaining the patent, 
adjudginf^ infringement granting an injunction and 
referring the cause to a master for an accounting 
is interlocutory. So also a decree granting a 
preliminary injunction. 

2 . Granting of Preliminary In.iunction . 

a. Applicati on for "preliminary Injunction. 

An application for preliminary injunction is 
usually made upon thj filing of the "bill and 
the sulomission of a^ffidavits of both plaintiff 
and defendant. A clear case of plaintiff's title 
and defendant's infringement together with danger 
of irreparable injury must be shown. There must 
also appear facts giving rise to a presumption of 
validity. 

b. Bond of Plaintiff . 

The Clayton Act, Section 18, requires that a 
bond or security be given by the plaintiff to the 
defendant, as a condition precedent to the issuance 
of the preliminary injunction to cover defendant's 
costs and damages if v;rongfully enjoined. 

c_,. Grounds giving Rise to Presumption of Validity . 

On an applicacion for preliminary injunction, 
validity will not be presumed by reason of the mere 
production of the patent. In order to give rise 
to such presumption the applicant must shov/ either 

(1) That the patent has been held to be valid in 
a contested case in a federal court. 

Interurban Ry. & T. Co . v . Westinghouse E. & 
Tifg. Co ., 185 Fed. 170. 

(2) Or that the public has generally acquiesced m 
the validity of ■che patent. 



'-\ 



8 



Thonson Electric Vfelding Co. v. Two Rivers Mfg. 
Co. , 63 Fed. 120. 

d. Dou"btful Case ■ 

"It is a cardinal principle of equity juris- 
prudence that a preliminary injunction v/ill not 
issue in a douttful case." 

Hall . Signal Co. v. General Ry. Signal Co., 153 
Fed. 907, 908. '~ 

e_. Cessation of Infringement . 

The stopping of the infringeyrent and the 
statement Toy the defendant that he does not intend 
tc infringe in the future, do not justify- the in- 
frmgeriient nor ordinarily relieve the defendant 
from injunction, particularly if he is in position 
at an;/ time to resume infringement. 



202 



^0 5-^^en Company , v. Myers Company, 242 U.S. 

Brookfield v. Slm.er C-1 ass works , 132 Fed. 312, 315 

General Electric Co - v. II - E . Elec .Co., 128 Fed. 
738. — 

"But still an injuncticn is only granted to 
prevent threatened injury. If it is clear that no 
injury- is threatened, it should not issue." 

Crier v. Inses , 170 Fed. 324, 326. 

f . Defenses ■ 

The usual defenses to an application for 
prelininary injunction are: 

(1; Denial of facts constituting plaintiff's 

pr im.a facie ca.se . 
(2) prior adjudication not in point. 

v3) ab general acquiescence. 

(4) Invalidity of patent . 

(5) Expired patent. 
(6; License. 

(7) Estoppel. 
(S) Laches. 



XlV 



V/alI-:er on Patents , Sects. 677-684. 

g. Bond of r.ief endant . 

For strong and special reajcns , the Court in 
the exeroioe of its dipcreuion -may suspend the 
ini unction upon the giving of a sufficient Tocnd 
or security by the defendan'c. 

3. Motion to i>is solve Preliminary Injunctio n. 

A r?.otion to dissolve a preliminary iniunction 
must he seascnahly made , and to he granted such 
showing must he made as would in the first instance 
ha-ve prevented xhe issuance of the injunction. 

Timcl at v. Phi l a. Pneumatic Tool Co . , 1£3 Ped. 38,40, 

Carey v. Domestic Sprin g Bed Co_. , 26 Fed. 58, 40. 

C. FIIIAL DEGF^E Al'D PERMABSITT INjUlICTlOlT. 

A final decree is one entered at the completion 
of the cause, as where the plaintiff's hill is 
dismissed, or where a decree is entered closing 
the case after ccnfirm.ation of a master's report 
upon an accounting. Usually Y\fhere the validity 
of the patent is sustained and the defendant 
found to infringe, a permanent injunction will 
he ordered in the final decree. 

D. APPEAL AHD CERTICRJ\RI. 

1- An appeal from, an order granting, continuing, 
refusing, dissolving or refusing to dissolve a 
preliminary injunction m a. patent cause, lies 
within thirty days 3,ftsr entry of said order to 
U. S- Circuit Court of Appeals. 



Judicial Code, Sec 



_29:, 



Note: Unless it appears that the District Court has 

proceeded upon en erronecu.s hypothesis of perti- 
nent fact or law, or has impr evidently exercised 
its legal discretion, the order will not he 
distur oed . 



Acme Acetylene A-c"oliance Co. 



'ommercial Acetv- 



lene Co - , 192 Fed. 321, 



/<ro 



2. jr^n appeal from a final decree in a pa.tent cause lies 
to the U- S. Circiiit Court of Appeals v\rithin six months 
after the entry thereof. 

•Judicial Code, Sec- 123, 



XlV 10 

Act, March 5. 1891 . Sec. 11. 

3. Certiora,ri fromU. 3. Supreme Court to TJ. S. Circ-uit 

Court of Appeals in ccise of a final decision must "be 

applied for withi^ three months after the entry of the 
decree complaineu on. 

Act , Sept . 6, 191^_, Chap. 448, Sec 6. 

Note_: The writ of certiorari only issues in rare 
instances, as where there is a conflict of 
decision involving large property rights, 
or where the administration of Justice is 
seriouBlj^ affected . 



COLlJllBIA UNIVERSITY IK TIE CITY OF HE\7 YORE 
COURSE OK PATENT LAW 
COPYRIGHT 19 22 

"by 

Everett K. Curt;'.s 



SYiJOPSIo OP LECTURE XV 

A. PATENT ACCOUiJTIKG-3 LEPORE ATIaSTER. 

1- Reference to Master . 

A reference to a Master for the purpose of 
taking an accounting of plaintiff's damages e.nd 
defendant's profits is ordinarily incorporated 
in the decree for the plaintiff in an equity 
suit for infringement of patent. 

2. Presentation of Order to Master . 



Where such a reference is decreed it is the 

duty of tne plaintiff to present tne order of 

reference to the Master within twenty days there- 
after . 

Federal Eojjity Rule 59 . 

3 . Master ' s Sur:grLon3 . 

The Master's suniffions is issued hy the Master 
and is directed to the defendant requiring him to 
bring in on a certain day his account of profits 
in the form of dehtor and creditor and usually 
specifies and defines subject matter to Toe cov- 
ered thereby. 

Pedera l Equity Rule 63 

Beck\7ith v. Malleable Iron Range Co ., 207 
Ped. 8 48. 

Casjlman & Denis on Mfg. Co • v. Or an^me s , 225 
Ped. 8So. 

If desired a notion may be miade by the pla.intiff 
for the issuance of a Master's surmons, and be heard 
before the Master af"cor notice to the Defendant . 
This v/ould avcid the bringing of a motion tc quash 
by the aefendant whach might be made.v/ere the summons 
to issue on the gx_ parte application of the plaintiff. 



]IV 



4 . The .jef andant ' s Accornt . 

The defendant's account required "by Equity Rule 63 
is to be on the basis of a cash state-nent of moneye 
received a,nd dis'iQursed, end the duty is imposed upon 
tne defanda^nt to raai-:e the needful xrvest igat icn and 
to state all items in detcil. 

Cashjnan oc ' Dea± son iiifg_. Or_. , v. . Gi'ar-Tiies , 225 ?ed. 
S83. 

In re 5ecla"ith , 203 j'ed. 45. 

The hasi? of the proceeding so far as regards 
profits is the account filed "by the defendant. 

Becky-jth v. Laalleahl e Iron Range Co . , 207 Fed. 
848. 

5. Motion to 0,uas h. 

If the Ila.^ter'o suTiiions is defective in that the 
scope of the accounting is unduly extended, or 
directed tc matters not properly "before the court; 
a irnotion to cuash should "be ruade "by the defendant 
hefore the Master . prior to the preparation and 
filing of the account. Such motion wouJ.d, hcv.-ever, 
he of no avail v^/here the Master had issued the 
surrjmons cacer hes^ring all parties thereon u.pon a 
motion hy the plaintiff therefor. 

Co.lections . 



Where the defendant does not ful±;r account, or 
'v7here the account is defective on its facu and not in 
compliance vrith the Master's sunmions, tne plaintiff 
ma.y file objections thereto and may if his objections 
are sustained require the defendant further to account 
The plaintiff may also require the production for 
exarnhnation of those persons best acquainted v/ith the 
account .together v.^ith the books a.nd pa.pers upon vvhich 
it is based, and may make further objections, and 
recp.iest further accounting. 

Fede-a"5. Equity Rules 62 , 65. 



Gontem.pt R-^cceedi ngs . 

Tnere the defendant refuses to account or to 
sub::ait him^self for examinatioh thereon or produce 
all bocks, papers, -'Vritings, vouchers, and other 
documients relative thereto, the I'^aster should report 
refusal to tna District Court, and thereupon an 
application for an attachment for contem-pt may be 
m.ade by the 'olaintiff . 



XV 



3 

8 . Damag;es . 

The plaintiff may at any tiiTie request the Master 
to assign a tijTie and place where evidence may he 
offered as to the damages suffered "by reason of 
defendant's infringement- 

'federal Sguity Rule SO . 

In practice, evidence as to damages is not 
ordinarily taken before the account of the defen- . 
dant as t profits has been filed. 

9 . Mas t e r ' s Re -p o rt . 

Prior to filing the Master's Report, it is the 
usual practice for the Master to suhmAt a draft 
report to counsel in the case and afterwards to dis- 
cuss the same with thexn together with their objections 
and requests for findings. The Master's Report when 
in final form is filed in the Clerh's Office of the 
District Court where the cause is pending, the parties 
having twenty days thereafter to file exceptions 
thereto. Where no exceptions are filed the report 
shall stand affirmed, but in case of exceptions they 
shall stand for hearing before the court. 

Federal Equity Rule 66- . 

10 . Ac G ount ing Pe r i o d 4 

The period of the accounting is down to the date 
of the Master's Report. 

Stepler v . Riverside He i ght s Orange C^ovrer* s Assn. , 
211 Red. 98 5. 

11 . Conclusiveness of M?.ster's Report . 

The conclusions of the Master as set forth in 
his report exe to have every reasonable presumption 
in their favor and are no"!: to be set aside or modi- 
fied unless clearly vi^rong. 

Continuous Glass Press Co . v . Schmertz Vi^ire 
Glass Co . , 219 Fed. 199. 

E. RECO'rERY OF QSPEKDANT'S PROFITS. 

1. General Rules . 

The genera], r'.iles as to the recovery of defendant's 
profits in equity for infringement are laid down in 
the leading case of "westinf^house Elec . & Mfg . ^o - v. 



XV 



¥ae:ner Slec . & Mfg. Co_. , 225 v, S- 604, froLi which 
rcay be gathered the following: 

a. Where the infringer has sold cr used a xoatented 
ariicle the plaintiff is entitled to recover all of 
the profits. 

b. Where a pa.tent, although using old elements, 
gives the entire value to the c omloination, the 
plaintiff is entitled to recover all the profits. 

£. viihere the profits are made by the use of an 
article patented as an entirety, the infringer is 
liable for all the profits unless he can show, and 
the burden is upon him to show, that a portion of 
them is the result of some other thing used by him. 

d. viHiere the plaintiff's patent is only a part 
of the machine and creates only a part of the 
profits, he must give evidence tending to separate 
or apportion the defendant's gams between the 
patented feature and unpatented features. Biit 
where it appears in such case that the defendant 
has so commangled a.nd confused the parts of the 
fund that it is im-possible to effect a separation 
thereof, the plaintiff is exititled to the entire 
fund within the doctrine of trustee ej^ male :^i cio . 

IJo te : The Court holds xhat the liability 
of the defendant is not limited to cases 
where the patented device is shovm to have 
preponderated in the creation of. profits. 
The owner of a small part of the fund is 
as much entitled to the protection of the 
law as the owner of a larger share. 

e_. Where profits are not di^terminable v;ith reason- 
able certainty, court may allow reasonable sum. as 
profits . 

Act of Feb. 18, 1922. 

2 . A-p-portionm.ent where profits only due in part to 
Patented Improvement . 

a. Burden is on the Plaintiff . 

V/here the entire market value of the infring- 
ing device cannot be attributed to plaintiff's 
patent, the burden is on the plaintiff to prove 
ViThat part of the entire profits arose from the use 
of its patented invention. 

Underwood T;\'~pewriter Co . v. Fox Typevo: iter Co . , 
220 -^ed. 880 . 



XV 5 

D.. ^Jhere Infringing Elements are 'Lifr' of iTachine . 

"Where the eniplow^nt of the infringing elements 
are the life of the machine, so thai, witnout such 
elements such imachine v/ould not he a marketable ar- 
ticle, -- the plaintiff is entitled to the entire 
profits . " 

Rachine Engine etc . Co « v. Confectioners ' M. & 
Mfg . Go •= 234 Fed. 87 6 . 

c . Fhere patent is for Improvement merely 

The "burden of apportionment is logioc.117/ u.pon 
the plaintiff where the patent in suit is for a.n 
improvement and not for an entirely new device. 

E.iver side Heights Orange Gr ovrers ' Assn. v . Steble r , 
240 Fed. 703. 

d. St andar d of Comp ar i s on . 

The measure of defendant's liability for profits 
is the saving by his use of plaintiff's invention 
over the use of non-infringing structujres avehlable 
during the period of infringement, and adequate to 
obtain an equally beneficial result. 

Americ an Pneumatic Servi ce Co » v. Snyder , 241 
Fed. 274. 27 5. 

e_. Expert Test im-ony . 

Tne apportionment of profits is a question of 
expert knowledge to be derived frommion of experience 
in the manufacturing and selling field in v/hicn the 
infringing article is sold. 

Herman v. Yonngst^vjn Gar I/if g . Co . 216 Fed. 604, 
607-608. 

3 . Cost of Pro:duction and Computation of Profits. 

In an accounting for profits, the cost of produc- 
ing the v/hole is set off against the returns from the 
sa.le of the portion sold, and a profit f-row. the sale 
of the portion sold, and a pi"'ofit or less is deduced. 

Continuou s G-las s Press Co . v. Schmertz Wi re Glass 
Co... 219 Fed. 199, 202. 

Decker v. Smith , 225 Fed. 7'^6. 
Thus there; Tms.y be set off against gross income; 
(1) Fair and reasonable salaries. 



'ZV 



xTashville S ytv-V Co_. v, Coca-Cola Co • . 215 
Fed. 527, 535-534. 

(2) Taxes ar.d Insura.nce , only wnere plant "/as 
devoted entirely to the infringing business. 

Carborundum Co . '/ . Electric Srielting & 
Aluminum Co . , 205 Fed. 97 6, 98 5. 

(3) Repairs and Depreciation, only v.'here plant is 
used onlj'- for infringing purposes. 

Metallic Rubber Tire Co . v . Hartford Rubber 
Wo r 1:3 , 245 Fed. 860. 

(4) Royalties paid for licenses under other patents 

He rnian v. Youngs town Car Mf g . Co - , 216 Fed. 
604, 509. 

(5) Actual Cost of Xfaterials as of date of purchs^se 
by the Defendant . 

Byer Iv v. Sun Co . , 225 Fed. 7 59. 

Co) Interest on C3,pital to the extent of its actus-1 
employinent in the infringing operations. 

V/estern Glass Co- v. ocl-rffiertr- Wire Glass Co. 



226 Fed. 750, 733. 

(7; Advertising expenses so far as assisting sales 
of infringing articles. 



; Di a 



(S) Cost of Labor required to manufacture infringing 
devices . 

(9) Other res.sonable costs of manufacture, including 
selling and overhead expenses-, so far as involved 
in the infringing business. 

Alleged iteiris constituting cost of production 
v/ill be closely scrutinized, and vill not be allowed 
unless pertinent and proper; thus there ^7ill not be 
set off against gross profits: 

(l) Superior intelligence of infringer as enabling 
hiiii to obtain profits denied to one of less iiientality. 

Conrov v. Fenn . Flee. & FTg. Co- 199 Fed. 
427, 430-451. 



r^ 



t 



(2) The cost of infringing devices which v/ere given 
away to stir.ulate sales . 

Underwood TAnpe^nri ter Co - v . Fox Typewriter Co . 
220 Fed. 880. 

(3/ Expenses paid or incurred on accoun't cf attempt- 
ed sales, and "bad dehts" resulting therefrom. 

Decker v. Smith . 225 Fed. 775. 781- 

(4) Good will of "business gained through sale of in- 
fringed structure . 

Byerly v. Sun Co.. , 226 Fed. 7 59, 7 5o. 

(5) Loss occasioned through defective manufacture of 
infringing articles. 

Metallic Rubber Tire Co • v . Hartford Rubber Works 
Co. , 245 Fed. 850. • 

(6) Patent and legal expenses. 

Ibid . 

4 . Interest on Profits . 

Vi/hile allowance of interest is largely a matter 
of discretion, it is generally held that profits do 
not bear interest until after the amount has been 
judicially determined. 

Cambria Iron Co . v. Carnegie Steel Co., 224 Fed. 
947, 955. 

We stern Glass Co . v . Scbmertz Wi re Glass Co_. , 
226 Fed. 730 , 738. 

In the Second Circuit, it is settled that whare 
there is a genuihe controversy, the interest runs 
from, the filing of the master's rexjort- 

Vandenburgh v. Concrete Steel Co. 278 Fed. 607, 
510 . 

C. RECOVERY OF PLAIITTIFF'S DAl'IAGES 

1. What Damages Recoverable . 

The same damages are recoverable in equity as in 
actions at law, but a claim for damages is only allow- 
ed in equity to those cases where the injury to the 
plaintiff sustained from the infringement is plainly 
greater than the aggregate profits m.ade by the infringer. 



I 



XV 8 

Govrpe v. Rover , 155 U. S. 565, 58£. 

Thus in an aquity action for infringement there 
may "be considered as a "basis for the ascertainment 
of damages : 

a. Plaintiff's esta'olished royalty. 

b- Loss of sales, or other direct injury. 

c_. Reasonahle royalty. 

d. Reasonaiole sum as general damages. 

U. 3- Rev . Sts. Sec. 4921, as amended. 



2. Reasonable Royalty . 



The leading case of Dowagiac Mfg. Go_. v. 
Minnesota Moline Plov< Company , 235 U. S. 541, lay- 
ing dovm authoritatively the doctrine of reasonable 
royalty, has provided an effective method of re- 
covery Avhere the plaintiff is unable to apportion 
or recover dei'endant's profits, or to prove an 
established royalty or a direct injury like loss 
of sales, prior to this decision, the Circuit 
Court of Appeals of the 1st, 2nd, 5th, 8th and 9th 
Circuits took a contra view. 

According to this case, proof of a reasonable 
royalty may be made by evidence of general dam.age , 
or "damage not resting upon any of the applicable, 
exact methods of computation, but upon facts r nd 
circumstances which permit the jury or the '^^urt 
to estimate in a general, but in a sufficiently 
accurate , way the injury caused to pla^intiff by 
each infringing sale." 

United States iFrumentum Co . v. Lauhoff , 216 
Ped. 610 , 617. 

"It was permissible to show the value by 
proving what would have been a reasonable royalty, 
considering the nature of the invention, its 
utility and advantages, and the extent of the use 
involved." 

D owagiac Mf g . Co . v. MinnesoHta Moline Plow Co - 
235 U.S. 641 , 548. 

3. Evidence of Reasonable Royalty; . 

"The jury, m a patent case, can be shown 
what plaintiff's patent property v^/^as , to what 
extent defendant has taken it, its usefulness 
and commercial value as shov/n by its advantages 



vx 



ever ether things and ''oy the ertent of its use 
and as shown Dy the profits and sa-vings which 
could, be iT:ade upon its sale or adoption. The 
jury can learn how rauch of tne realizable px'ofit 
should he credited to tne manufacturing process 
and "business risk, and hoT? much to the patent; 
alsc, •'.vha-t snare of the profits or of the sell- 
ing price it may he customary in that or similar 
business t.o .allow for the use of such invention. 
ZHxperts may be amply qualified to give useful 
opinions as to the value of the property which is 
to be appraised." 

United States 'Frumentum Co . v. Lauhof f , £15 
5^ed. 610, 517. 

4 . Interest on Reasonable Ro y alty . 

It is discretionary y;i th the court in a suit 
in e qu i t y for in f r i n geme n t , t o alio v/ interest 
upon unlicuida.ted damages based upon a reasonable 
royalty. 

Gonscliiated Rubber Tire Co. v. "Diamond Rubber 



Co. , 226 Red. 4455, 453. 
Reasonable Sum as General IDam.ages . 

If it a-ppears on tl:e proofs that the plaintiff 
ha.s suffered damages from, the infringement bi.".t that 
such dam-ages are not susceptible of calculation and 
determinant ion with reasonable certainty, the court 
may on evidence tending to establish the sane, in 
its discretion, receive opinion or expert testimiony, 
and upon such evidence and a,ll other evidence of 
record the court nay decree the payment of a reason- 
able sum as general damages for the infringement. 

Act of Reb. 18. lc>22. x^r:ending Sec. 4:^?!. 



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